Order Requiring Additional Briefing on Claim Construction Standard and Patent Expiration IPR2014-00247

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Takeaway: While it may be reasonably established that the broadest reasonable interpretation claim construction standard does not apply to patents that expire prior to a final written decision, the Board may still entertain argument that the standard still applies to expiring patents.

In its Order, the Board summarized the initial conference call and ordered that Due Date 1 be moved and that each party file a paper setting forth its position regarding the expiration date of the ’879 patent and the proper claim construction standard.

Due Date 1 setting forth the deadline for Patent Owner’s Response was reset because the schedule only provided Patent Owner with six weeks to prepare a Response while providing Petitioner with eighteen weeks to prepare a Reply.

The Board also advised the parties regarding Motions to Exclude and Motions for Observations on Cross-Examination. Motions to Exclude should not include arguments regarding whether a reply exceeds the scope of a proper reply.  Such issues should be raised with the Board on a telephone conference call.  Motions for Observations should be no longer than a short paragraph and not be argumentative.  They should only be filed to contrast cross-examination testimony with other evidence in the record.

The Board asked the parties for their positions regarding when the ’879 patent will expire and, consequently, what standard of claim construction should be applied in the final written decision. The Board noted that the claims of an unexpired patent are given their broadest reasonable interpretation and that patents that expire prior to a final written decision are construed as in a district court’s review.  However, even if the patent would expire prior to the final written decision, no presumption of validity applies and the Board would not apply a construction with an aim to preserve validity.

Patent Owner contended that the rule of broadest reasonable interpretation would not apply if the ‘879 patent expires, because Patent Owner would have no opportunity to amend the claims. Patent Owner also committed to not filing a Motion to Amend.

Petitioner, however, contended that the rule of broadest reasonable interpretation should still apply in the final written decision because the patent had not expired when trial was instituted.

The Board ordered the parties to file a paper indicating when each party believes the ’879 patent will expire and what claim construction standard applies.

Cisco Systems, Inc. v. AIP Acquisition, LLC, IPR2014-00247
Paper 17: Order on Conduct of the Proceedings
Dated: June 26, 2014
Patent 7,724,879

Before: Jameson Lee, Howard B. Blankenship, and Justin Busch
Written by: Lee