One of the main reasons to challenge a patent at the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) instead of at the district court is that the PTAB will construe claims more broadly, using the broadest reasonable interpretation (BRI) in light of the specification, instead of "ordinary and customary meaning" to a person of ordinary skill in the art. However, when a patent has expired, BRI is no longer the appropriate standard for construction, and "ordinary and customary meaning" (see In re Rambus) under Phillips v. AWH Corp. should be used instead. This begs the question, can a patentee file a terminal disclaimer after the PTAB has instituted IPR to change the standard of review and thereby request termination of the IPR? Recently, in Amkor Technology, Inc., v. Tessera, Inc., the patentee decided to find out after the review was well on its way.
At issue in Amkor Technology was the validity of claims 1 to 8, 10 to 13, 18, 19, 24, and 45 of U.S. Patent No. 6,046,076.1 After completing the substantive briefing and after the evidentiary record closed, Tessera filed a terminal disclaimer disclaiming the remainder of the term beyond April 11, 2014.
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