Among the advantages to inter partes review proceedings, for petitioners, is the ability to have the limitations of subject patent claims evaluated pursuant to a “broadest reasonable interpretation” standard (“BRI”), instead of the Phillips standard that is required in district court litigation. In some instances, it can be easier to render claims unpatentable using this broader claim construction standard. To get around that broader standard, however, Patent Owners are trying creative ways to get to the potentially more narrow Phillips standard.
To that end, in Amkor Technology, Inc. v. Tessera, Inc., IPR2013-00242, Patent Owner filed a terminal disclaimer of the remaining term of the challenged patent and then argued that the claims of the now-expired patent should be not be evaluated under BRI, but under Phillips. The second step of Patent Owner’s strategy was to then request authorization to file a motion to terminate the proceeding on the basis that the Board applied the broadest possible interpretation standard in the decision to institute this inter partes review. Id. Petitioner opposed the request arguing that Patent Owner improperly delayed until all substantive briefing was completed. Id. at 3.
The Board denied Patent Owner’s request, finding that Patent Owner did not move quickly enough to have the issue considered. Because Patent Owner waited until all the substantive briefing in the proceeding had concluded before filing the terminal disclaimer, it was not feasible to change the standard by which the challenged claims would be interpreted. As such, the terminal disclaimer was ordered to be held in abeyance, pending the resolution of the IPR.
Importantly, the Board did not hold that this technique would not work under different circumstances. We await the first opportunity for a Patent Owner to file a terminal disclaimer early in the proceeding so that the Board’s objections in this case are overcome.