Consistency on claims

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Claim scope statements are not being used as Congress intended in US Patent Office litigation proceedings, as Kenneth R. Adamo explains.

As part of the recent America Invents Act (AIA) revision of the United States patent law, the US Congress revised 35 USC § 301, to allow submissions of a “claim scope statement” to the United States Patent and Trademark Office (USPTO) for use in patent office litigation proceedings. (Section 6(g), AIA). These include inter partes review (IPR) proceedings, and the post grant review (PGR) proceedings that will be applicable to US patents with an effective filing date on or after March 16, 2013.

New 35 USC § 301(a)(2)

Basically, 35 U.S.C. § 301(a)(2),(e) allow a third party to anonymously submit a claim scope statement: a statement of the patentee, filed in a proceeding before a federal court or the USPTO, “in which the patent owner took a position on the scope of any claim of a particular patent.” The third party must submit with the patentee’s statement any other documents, pleadings or evidence from the proceeding that addresses the statement. (35 U.S.C. § 301(c)) Deposition testimony of the patent owner occurring during the course of the federal court proceeding may be submitted in redacted form. (77 FR 46617). Also, the third party must present a detailed explanation, in writing, as to how the information in the submission is pertinent to the claim(s) of the patent and how it is applied to each of those claims. (37 CFR §1.501 (a)(3), (b)(1))

The submission must identify (1) the forum in which the statement was made; (2) the proceeding designation (case citation or USPTO numerical designation); (3) an identification of the specific papers of the proceeding containing the statement of the patent owner; and (4) an identification of the portion(s) of the papers that show how the written statement being asserted to constitute a statement of the patent owner under 35 U.S.C. § 301(a)(2) constitutes such a statement. (See 37 CFR § 1.501(a)(3)) The USPTO is limited to consider such “claim scope statements” only to determine the proper meaning of a patent claim in an ex parte reexamination proceeding, inter partes review or post-grant review proceedings that has been already initiated. (35 USC § 301(d)) Consideration of such statements in the course of deciding whether to initiate a USPTO review is prohibited.

Submissions to the US International Trade Commission (ITC) do not come within 35 USC § 301(a)(2), as the ITC is a federal agency and not a federal court. (77 FR 46617).

Why did Congress add 35 USC § 301(a)(2)

The promulgating comments in the Federal Register regarding 37 CFR § 1.501(a)(2), the USPTO rule that effects 35 U.S.C. 301(a)(2), made the reasoning behind the revised statute quite clear:

Section 1.501(a)(2) permits any person to submit to the Office statements of the patent owner that were filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent. As long as the statement was filed by the patent owner in the proceeding, the statement is eligible for submission under §1.501(a) (2) even if originally made outside the proceedings. Permitting submission of these claim scope statements is intended to limit a patent owner’s ability to put forward different positions with respect to the prior art in different proceedings on the same patent. See H.R. Rep. No. 112-98, Part 1, at page 45 (2011) (“[t]his addition will counteract the ability of patent owners to offer differing interpretations of prior art in different proceedings.” 77 FR 46617 (emphasis added).

Plainly, the patent owner is not to be allowed to speak out of both sides of his/her mouth, telling the USPTO one thing while saying quite another thing to a federal trial judge.

How the USPTO was to make use of such statements was further addressed in Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith American Invents Act, 77 CFR 46625 (August 6, 2012), especially in comment 18:

Comment 18: Several comments requested clarification of the phrase “proper meaning of a patent claim” as set forth in 35 U.S.C. 301(d) and in §1.510(b)(2) and § 1.552(d). The comments suggested that claim construction of patent claims in post-patent proceedings at the Office should be based on the same standards as patent claim construction in the courts, following Phillips v AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and Thorner v Sony Computer Entertainment Inc., 669 F.3d 1362 (Fed. Cir. 2012). These comments also questioned how statements by patent owners will be used to determine the proper meaning of a patent claim.

Response: The Office standard for claim construction, i.e., “the proper meaning of a claim,” is the “broadest reasonable interpretation” (BRI) consistent with the specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997), and In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); see also MPEP § 2111. During reexamination, claims of an unexpired patent will be given the broadest reasonable interpretation consistent with the specification. See In re Yamamoto, 740 F.2d at 1571-72 (Fed. Cir. 1984). In a reexamination proceeding involving claims of an expired patent, claim construction is performed pursuant to the principles set forth in Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986); and MPEP § 2258 I.(G) (8th ed. 2001) (Rev. 8, July 2010). Written statements submitted pursuant to 35 U.S.C. 301(a)(2) will not be used when ordering reexamination, but will be used during reexamination to assist in construing the claims. See 35 U.S.C. 301(d). 77 FR 46621 (emphasis added).

But cf. Comment 5 and Response, 77 FR 46619 (“The effect of a patent owner claim scope statement on the merits of an ordered or instituted post-patent proceeding will be addressed on a case-by-case basis.”).

The statute, rule and promulgating comments, then, all appear to leave little if any discretion on the USPTO’s part regarding the use that is to be made of a claim scope statement if one is submitted: it “will be used” to assist in construing the claims.

This “will be used” directive strongly contrasts with the USPTO’s prior position, before 35 U.S.C. § 301(a)(2) was added by the AIA, that was set out in MPEP § 2258. F. 1: “The examiner may rely on admissions of the patent owner that are part of the court record.” (emphasis added). See also 37 CFR § 1.104(c)(3). The USPTO did not consider itself bound to apply patent owner admissions in court proceedings to claim construction determinations in reexamination situations. In fact, the USPTO would often flatly ignore such statements, which, if made in the context of a related federal court proceeding, usually constituted evidentiary admissions. See, re the lack of affect of litigation admissions in a merged ex parte/inter partes reexamination as to claim construction, The J.M. Smucker Co. v Mack-Ray Inc., Appeal No. 2010-011461 (BPAI Dec. 30, 2010).

What has the USPTO done re claim construction statements to date

To date, however, in two PTAB decisions, the USPTO appears to be resisting the letter of 35 U.S.C. § 301(a)(2). In Garmin Int’l Inc., et al. v Cuozzo Speed Technologies LLC, Case IPR 2012-00001 (JL) (PTAB Jan. 9, 2013), Decision to Initiate Trial for Inter Partes Review, the Board noted that its decision hinged on the meaning of “integrally attached” in independent claims 1 and 10. In addressing the meaning of “integrally attached” the Board stated that:

Petitioner does not make known its construction of “integrally attached.” Instead, Petitioner states that the term has to mean, in this proceeding, what the Patent Owner asserts it means in the infringement suits the Patent Owner has filed against various parties including Petitioner. That argument is without merit. The meaning of claim terms is not governed by what the Patent Owner says they mean in filing an infringement suit based on the ‘074 Patent. There is no reason to assume that the Patent Owner’s litigation position is correct. Litigation positions taken subsequent to issuance of the patent are unreliable. See Philips v AWH Corp., 415 F.3d at 1318. In any event, the Petition itself does not disclose or discuss the Patent Owner’s position and Petitioner even states that the Patent Owner’s litigation position in the

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Résumé

Ken Adamo, Kirkland & Ellis, USA

Ken is a partner in the Intellectual Property group in Kirkland’s Chicago

and New York offices. His practice focuses on litigation in all areas of

intellectual property law, particularly including patent, copyright, unfair

competition, trade secrets, and related antitrust matters.