This is the third article in WilmerHale's series of Expert Analysis pieces concerning post-grant issues — the first, "Lessons From Inter Partes Review Denials," was published Aug. 7, while the most recent, "When Inter Partes Review Meets Hatch-Waxman Patents," published Sept. 9.
With the advent of post grant proceedings implemented by the U.S. Patent and Trademark Office according to the America Invents Act of 2011, there has been much focus on claim construction issues and the interplay between the PTO proceedings and parallel district court proceedings involving the same patents. The increased focus on claim construction is due, at least in part, to the implementing PTO rules for the AIA. Specifically, the rules require that the Patent Trial and Appeal Board use a "broadest reasonable construction in light of the specification of the patent in which it appears" standard when performing claim construction[1] This claim construction standard has been in place for decades, but it is the first time the PTO has articulated this standard in a rule promulgated by the office.[2]
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Originally published by Law360 on October 6, 2014.
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