Takeaway: If a patent expires after institution of a trial, but before issuance of the final written decision, the Board will likely use the Phillips claim construction standard to construe terms in the final written decision.
In its Order, the Board confirmed that it will use the Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005), claim construction standard to review the claims of the ’005 Patent. The Board previously asked the parties to file a joint paper indicating both the date of expiration of the ’005 Patent and whether they agree that the rule of broadest reasonable interpretation does not apply at the time of the final written decision if the ’005 Patent expires before that time. The parties filed a Stipulation indicating that the ’005 Patent will expire on November 4, 2014, and that the parties agree that the rule of broadest reasonable interpretation will not apply. The Board noted that the oral hearing is scheduled for January 9, 2015, therefore, it is highly likely that the final written decision will issue after the expiration of the ’005 Patent. Therefore, the Phillips standard will apply because the expired claims are not subject to amendment. The Board noted that there will still be no presumption of validity, Petitioner’s burden of proof is by a preponderance of the evidence, and the Board will not apply a rule of construction with an aim to preserve the validity of the claims. Additionally, the Board reviewed its analysis in the Decision to Institute, and found that the application of the Phillips standard does not change its construction of the terms construed in the Decision.
Square, Inc. v. J. Carl Cooper, IPR2014-00156
Paper 18: Order on Conduct of the Proceeding
Dated: June 23, 2014
Before: Jameson Lee, George R. Hoskins, and Kristina M. Kalan
Written by: Kalan