Holding Terminal Disclaimer in Abeyance Pending Outcome of the Proceeding IPR2013-00242

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Takeaway: The Board can hold the filing of a terminal disclaimer in abeyance pending the outcome of the proceeding to avoid switching the claim interpretation standard of the proceeding, and may choose to do so when the patent owner waits until after all substantive briefing is completed and the evidentiary record is closed to file the terminal disclaimer.

In its Order, the Board ordered that the terminal disclaimer filed by Patent Owner as to the patent at issue be held in abeyance until the instant proceeding terminates or a final written decision is issued, and that the challenged claims will continue to be given their broadest reasonable interpretation in light of the patent.

Patent Owner filed a terminal disclaimer of the remaining term of the challenged patent as to the patent at issue in this proceeding. Patent Owner argued that the filing of a terminal disclaimer has an “immediate” effect on the proceeding, namely that the broadest reasonable interpretation standard no longer applies. Patent Owner requested that the Board terminate the review because all of Petitioner’s evidence is directed to the broadest reasonable interpretation of the claims, or apply the Phillips construction standard when issuing a final written decision.

Petitioner argued that the Board can continue to apply the broadest reasonable interpretation standard, because Patent Owner participated in the proceeding based on that standard, had the opportunity to move to amend claims, and improperly delayed until late in the proceeding to raise the terminal disclaimer issue. Petitioner further argued that the terminal disclaimer does not become affective until an inter partes review certificate issues. Finally, Petitioner argued that permitting Patent Owner’s terminal disclaimer to affect the standard to which the claims are interpreted would encourage abuse by patent owners.

The Board may vacate or hold in abeyance any non-Board action directed to a proceeding while a patent is under the jurisdiction of the Board unless the action was authorized by the Board. See 37 C.F.R. § 42.7(b). With that authority, the Board ordered that the terminal disclaimer be held in abeyance until the termination or completion of the proceeding to ensure completion in a timely, fair, and efficient manner. The Board noted that all substantive briefing was complete and evidentiary record closed in the proceeding. All of the above briefing and evidence was premised on the broadest reasonable interpretation standard. Thus, the Board determined that it was not feasible, at this late stage of the proceeding, to change the standard by which the challenged claims are interpreted.

Amkor Technology Inc. v. Tessera, Inc., IPR2013-00242
Paper 129: Order on Conduct of the Proceeding
Dated: May 22, 2014
Patent: 6,046,076
Before: Kevin F. Turner, Justin T. Arbes, and Carl M. DeFranco
Written by: Arbes