In a decision denying institution of inter partes review rendered on February 5, 2020 , the Patent Trial and Appeal Board (“Board”) stated “there is no general rule that efficacy language in a claim is non-limiting.” Gilead Sciences, Inc. v. United States, IPR2019-01455, Paper 16 at 26.  The decision held, inter alia, that whether efficacy language in a claim should be given patentable weight is a fact-based inquiry that includes examining the application as whole and the patent record.  Id. at 26, 30.  When the claims at issue have been granted in a patent that issued from a continuation application, the patent record includes that of the parent patent (e.g., and, if applicable, any grandparent) or parent patent application.
Continue Reading PTAB States “There is No General Rule that Efficacy Language in a Claim is Non-Limiting”

This morning, the US Patent and Trademark Office issued its final rule implementing district court-style claim construction at the PTAB, replacing the “broadest reasonable interpretation” standard.  The official text of the rule will publish in the Federal Register on October 11, 2018, in final form.  The new rule is not retroactive and will apply to petitions filed on or after the effective date of the final rule, which is Nov. 13, 2018 (i.e., the first federal business day after 30 days from publication). [Note: 30 days from an October 11, 2018 publication falls on Saturday, November 10, 2018, but the PTO’s press release [PDF] reports the effective date as November 13, 2018.]
Continue Reading USPTO Issues Claim Construction Final Rule for Patent Office Trials – In with Phillips, Out with BRI

On August 27, 2018, the Federal Circuit in Ericsson Inc. v. Intellectual Ventures I LLC, vacated the Patent Trial and Appeal Board’s (“PTAB”) final written decision in an inter partes review (IPR) and remanded for the PTAB to properly consider all portions of the petitioner’s reply.  No. 17-1521, slip op. at 13 (Aug. 27, 2018).
Continue Reading Arguments in Reply that Expand on Previously Argued Rationale Should Be Considered by the PTAB

On May 8, 2018, the United States Patent and Trademark Office (USPTO) announced a proposed rulemaking to change the current claim construction standard used in inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) proceedings before the Patent Trial and Appeal Board (PTAB).  If approved, this change would align the standard applied in claim construction proceedings in the PTAB with the standard applied in District Courts and the International Trade Commission (ITC).  Currently, the PTAB interprets patent claims according to their broadest reasonable interpretation, while District Courts and the ITC apply the ordinary and customary meaning standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  This proposed rule would change the claim construction standard applied in all pending IPR, PGR, and CBM proceedings, and not just newly-filed petitions.
Continue Reading PTAB Proposes to Adopt the Phillips Standard for Claim Construction in Post-Grant Proceedings