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Quarterly Journal 44-4

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Individual Articles (click the title to view the article):

Changing the Claim-Construction Standard of Review
Members Only  
William M. Jay
This article explores the history of appellate review of patent claim construction, culminating in the Supreme Court’s decision in Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., which the author litigated. The article explains that the Supreme Court’s decision—applying de novo review to questions of law, but deferring to factual findings made in the course of claim construction—finds its roots in principles of law and procedure that come not from the patent realm at all, but which the Supreme Court sees as common to all forms of appellate review. The article also identifies some preliminary trends in the Federal Circuit’s cases applying the Supreme Court’s Teva decision.

Claim Construction Evidence During Patent Prosecution in the USPTO and Appeals to the Federal Circuit  Members Only 
Peter Hrubiec & David Marsh
In the wake of the decision in Phillips v. AWH Corp., the Court of Appeals for the Federal Circuit (“Federal Circuit) and the Patent Trial and Appeal Board (“PTAB”) at the USPTO have relied on various forms of intrinsic and extrinsic evidence in determining the meaning of a claim term during claim construction review. This article analyzes how both the Federal Circuit and the PTAB have evaluated how claims have been interpreted during ex parte prosecution, focusing on the evidence relied upon during the patent application process. Such evidence may be the specification explicitly, the prior art, claim language, the ordinary meaning of the claim term, and the dictionary definition. Looking at a cross-section of recent cases in each of the Federal Circuit and the PTAB, it becomes clear that while both bodies have relied on these various tools for evidence of a claim term meaning, in the majority of cases, a clear definition in the specification is the best way for an applicant to ensure claims are construed favorably.

Substitute Claims in Inter Partes Review -- Real or Illusory?  Members Only 
Andrea G. Reister, Christopher K. Eppich, Christopher G. Higby, & Nicole D. Sharer
In 2012, Congress enacted the America Invents Act which introduced inter partes review (“IPR”) as an adjudicative proceeding to replace inter partes reexamination. Although patent owners retained the ability to amend challenged patent claims, patent owners should be aware that there are significant differences between amending claims in a reexamination and substituting claims in an IPR. The burden of establishing that the patent owner is entitled to the substitute claims is the most significant difference between reexamination and IPR, and attempts to substitute claims during an IPR have been largely unsuccessful. Patent owners can improve their chances of successful claim amendments by adhering to the requirements set forth by the PTAB, and affirmed by the Federal Circuit, in recent decisions.

Beyond Cuozzo  Members Only 
Scott McKeown & Yasaswi Raparla
The recent U.S. Supreme Court decision in Cuozzo Speed Technologies settled the law with respect to claim construction standards in AIA post-grant proceedings. Because Congress was unclear in its intention, the Court deferred to the USPTO’s choice to use the broadest reasonable interpretation (BRI) standard. Nevertheless, even if the Court had struck down BRI in favor of the Philips analysis used in district court, there would have been little practical impact. The two standards are virtually indistinguishable besides the use of the term “broadest” in the name for BRI. For instance, both BRI and Philips start with the plain and ordinary meaning of claim terms, as modified by the context of the specification and prosecution history. Use of the word “broadest” in the USPTO’s standard does not imply broader relative to a court’s construction. Rather, “broadest” is relative to the patent specification as viewed by one of skill in the art, just as in a Phillips construction. Both standards also employ identical procedures to reach a reasonable, technical construction in view of the intrinsic and extrinsic record. Constructions between the forums actually diverge as a function of institutional motivations, the expertise of the decision-makers, and other practical externalities. Practitioners advocating in post-grant proceedings must recognize those factors and should incorporate lessons from the USPTO’s constructions in previous proceeding.

A Race to the Federal Circuit: How the Differing Claim Construction Stardards and Starnards of Review Influence Patent Invalidation
Members Only 
Leora Ben-Ami & Corinne Stone
With the passage of the America Invents Act, the USPTO has become another regular venue, in addition to district courts, to re-litigate patent validity. In either forum, ultimate resolution is based on the claim construction determined. Since the district court and the Patent Office are different types of fora, with different rules and standards, actions filed in both fora concurrently can lead to inconsistent claim interpretations. The decisions of these two fora are both subject to appeal to the Court of Appeals for the Federal Circuit. The Federal Circuit must apply the correct standard of review to claim construction, and to the extent that standard differs depending on the forum having decided the construction originally, inconsistent constructions, and even dispositions, may result for the same case at the appellate level. This article explores the implications of these differing standards and the sometimes anomalous decisions that result.

Impact of Teva on ITC Investigations: The Role of Experts at Markman Hearings Members Only 
Jim Adduci, James Ton-that, & Jack DaSilva
The 2015 Supreme Court decision in Teva Pharmaceuticals USA v. Sandoz, modified the standard of review for claim construction, and, in so doing, may have altered the International Trade Commission (ITC) Administrative Law Judges' (ALJs) motivations to hold Markman hearings. In Teva, the Supreme Court recognized that elements of a court’s claim construction may have factual underpinnings which “must be reviewed for clear error on appeal[,]” instead of de novo. An example of one such factual underpinning is the use of expert testimony during Markman hearings. Thus, by relying on expert testimony, ALJs could potentially insulate their claim constructions from de novo review by the Federal Circuit. Moreover, when litigants provide expert testimony related to these factual findings, they invite the ALJ to base their claim construction on such extrinsic evidence, triggering Teva’s deference. Using expert testimony may necessitate the addition of even more events to the compressed ITC litigation schedule, altering the cost benefit analysis performed by ALJs. Practically speaking, Teva may do little to alter an ALJ’s consideration of extrinsic evidence and the Federal Circuit has shown reluctance in applying Teva deference. Yet practitioners still can use experts to their advantage where the intrinsic evidentiary record is sparse to describe meanings known in the relevant art or to teach elements of technically complex patents.