Post-Grant Proceedings

Claim construction is perhaps the single most crucial factor in most patent disputes, but it is also one of the most convoluted. Beyond all the other intricacies involved in claim construction, another wrinkle is that the U.S. has two claim construction standards: (1) the “broadest reasonable interpretation” (“BRI”) standard applied by the U.S. Patent and Trademark Office (PTO); and (2) the Phillips standard used in district court litigation.1 The PTO BRI standard, which has now been articulated in the PTO Rules implementing the AIA,2 means that patent claim scope is determined not only on the basis of claim language, but by “giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’”3 On the other hand, the Phillips standard used by district courts gives claim terms “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.”4 Importantly, the district court conducts its analysis on the entire record before the court, which may include both intrinsic evidence (the claims, specification, and prosecution history) as well as extrinsic evidence (dictionary definitions and expert testimony), whereas the Patent Trial and Appeal Board (PTAB) generally affords less weight to extrinsic evidence.5
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In Biogen Idec MA, Inc. v. Japanese Foundation for Cancer Research, the Federal Circuit held that the American Invents Act (AIA) eliminated district courts’ subject matter jurisdiction to review a PTAB decision in interference proceedings declared after September 15, 2012.1 Thus, the Federal Circuit is the sole forum for interference appeals declared after that date, while decisions in interferences declared before that date may still be challenged in district court.


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Summary
At the end of last year, in Par Pharmaceuticals, the Federal Circuit affirmed the doctrine of inherent obviousness, but ultimately found that the defendants had not demonstrated that the claim limitation missing in the prior art was “necessarily . . . present, or the natural result of the combination of elements explicitly disclosed by the prior art.”


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In Commil v. Cisco Systems, the Federal Circuit held that “evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.” CITE. The court’s opinion did not explore the proof needed to show good faith, but it is reasonable to expect that a competent opinion of counsel may meet this requirement, potentially resurrecting the importance of invalidity opinions.


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Judge Newman’s dissent in Enzo Biochem, Inc. v. Applera Corp., 780 F.3d 1149 (Fed. Cir. 2015), demonstrates that the Federal Circuit is struggling with how much deference it is supposed to give in the review of claim construction in view of the Supreme Court’s ruling in Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).


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