United States: Fed Circuit Reverses PTAB Decision In IPR Proceeding

On June 16, the Federal Circuit issued its first-ever reversal of a Patent Trial and Appeal Board decision in an America Invents Act post-grant proceeding.  The opinion, drafted by Chief Judge Prost and joined by CAFC Judge Lourie and E.D. Tex. Judge Gilstrap, provides considerable guidance on claim construction and claim amendments in practice before the PTAB.

The case is Microsoft Corp. v. Proxyconn, Inc., No. 2014-1542 and 1543.  It reached the Federal Circuit after Proxyconn asserted U.S. Patent No. 6,757,717 against Microsoft in the Central District of California, and Microsoft initiated two separate inter partes review proceedings against the patent (IPR2012-00026 and IPR2013-00109).  The PTAB joined the two IPRs and granted review on certain claims.  In its final written decision, the PTAB found all but one reviewed claim unpatentable and denied Proxyconn's motion to amend its claims.  Both parties appealed.  The Patent Office intervened in support of the PTAB's position.

The Federal Circuit vacated certain portions of the final written decision, holding that the PTAB's claim constructions exceeded the "broadest reasonable interpretation" standard.  The PTAB's denial of Proxyconn's motion to amend was not disturbed.  Here are some key takeaways from the case:

Claim Construction before the PTAB

  • Applying the standard set forth in Teva Pharms. U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) to PTAB proceedings, the Federal Circuit will review PTAB claim constructions de novo and underlying facts involving extrinsic evidence for substantial evidence.  In Proxyconn, the Federal Circuit did not need to consider the PTAB's findings regarding extrinsic evidence because the intrinsic record "fully determin[ed] the proper construction."  Op. at 6 (citing Teva Pharms. U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) and Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc)).
  • While the PTAB is permitted to apply the "broadest reasonable interpretation" standard, Op. at 6 (citing In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015)), that standard does not include "giving claims a legally incorrect interpretation".  Claims must "always" be construed in light of the intrinsic evidence (e.g., claim language, specification, prosecution history).
  • In Proxyconn, the CAFC found the PTAB's construction of two claimed components "unreasonably broad".  The Court first concluded that the PTAB erred in construing "two other computers" to include "the caching computer," since such construction actually encompass other claimed components (e.g., the claim covered a system composed of A, B, C, D, and the Board's construction of element B included C and D).  Op. at 8-9.  According to the panel, the PTAB also wrongly construed "sender/computer" and "receiver/computer" as including intermediaries, explaining that the patent disclosure consistently refers to these two components as separate and independent components.  Op. at 11.

Motions to Amend before the PTAB

  • The CAFC identified three sources of requirements for motions to amend: 37 C.F.R. § 42.121, 37 C.F.R. § 42.20, , and the Board's decision in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, 2013 WL 5947697 (PTAB June 11, 2013).
  • The "procedural" requirements for filing a motion to amend described in 37 C.F.R. § 42.121(a), include that the motion to amend must:
    • Be filed no later than the patent owner response unless the Board provides otherwise;
    • Respond to a ground of unpatentability involved in the trial; and
    • Not enlarge the scope of the patent or introduce new subject matter.
  • The "substantive" requirements for filing a motion to amend described in 37 C.F.R. § 42.20, include that the patent owner has the burden of proof to establish that it is entitled to the amended claims.
  • The additional requirements for motions to amend in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, 2013 WL 5947697 (PTAB June 11, 2013) include at least the following:
    • Identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces;
    • Provide technical facts and reasoning about each such feature, including construction of new claim terms;
    • Show patentable distinction over the prior art of record;
    • Show patentable distinction over any other prior art known to the patent owner;
    • Make a representation about the specific technical disclosure of the closest prior art known to the patent owner.
  • In Proxyconn, the CAFC was presented with the question whether the Board could rely on requirements beyond those set forth in the regulations – i.e. the requirements of Idle Free – to decide motions to amend.  The CAFC specifically upheld one of the additional Idle Free requirements—namely, the requirement that the patent owner show that the substitute claims are patentably distinct over the prior art of record, including prior art that was of record, but that was not part of the ground instituted with respect to the claims being amended.
  • The CAFC did not reach the merits of the other requirements of Idle Free.  Indeed the opinion specifically stated in a footnote that the opinion did not address whether the Board could require patent owners to demonstrate that a proposed amended claim was patentable over all prior art known to the patent owner.
  • As a result, it is now clear that patent owners must demonstrate the patentability of proposed substitute claims over any of the prior art made of record in a post-grant proceeding, even if such prior art is not specifically part of an instituted ground with respect to the claims being amended.  It remains to be seen whether the CAFC will uphold the other requirements of Idle Free.

Practice Tips

Going forward, Proxyconn suggests that it likely behooves PTAB practitioners to tie their proposed claim constructions directly to the intrinsic evidence and also consult "informative" PTAB opinions, such as Idle Free, in making important strategic decisions, such as whether to move to amend one or more challenged claims of a reviewed patent.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.