shutterstock_439759441The Federal Circuit vacated the PTAB’s finding of nonobviousness of Verinata’s patent directed to methods of noninvasive prenatal testing, and remanded the case back to the Board.1 The Federal Circuit remanded because it couldn’t conclude whether the Board erred based on the PTAB’s opinion. The Board’s language was too vague to come to a definitive conclusion on this point. In its explanation for vacating and remanding the case, the Federal Circuit clarified the appropriate circumstances where the PTAB could limit its consideration of a prior art reference.

The PTAB is in error if it declines to consider the reference as evidence of the background understanding of skilled artisans during the relevant time frame simply because the reference had not been identified at the petition stage as one of the pieces of prior art defining a combination for obviousness.2 On the other hand, the Board does not err if it only finds that the development of the argument invoking the reference in the Petitions was inadequate.3

The Federal Circuit’s consideration of a second cited reference in the same Petition further clarifies this issue. The Petitioner, Ariosa, also challenged the Board’s decision on the separate ground that the Board erred in failing to consider some embodiments of a reference that the Board in fact relied on to institute the petition.4 The Federal Circuit disagreed with Ariosa on this point, finding that Ariosa’s Reply relied on previously unidentified portions of a prior art reference to make in its obviousness argument.5 The Board cited 37 C.F.R. 42.104(b)(5), which says that a Petition must identify “[t]he supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.”6 Thus, the Petition (not the Reply) must state the relevance of a reference or identify specific portions of the evidence that support the challenge.

This decision again emphasizes the need to put all relevant evidence up front in the Petition. Failing that, the challenger should try to characterize any new evidence in its Reply as background information regarding the state of the art as of the relevant time frame.

1 Ariosa Diagnostics v. Verinata Health, Inc., No. 2012-1215, slip. op. (Fed. Cir. Nov. 16, 2016).
2 Id. at 11
3 Id. at 12
4 Id. at 16
5 Id. at 16-17
6 Id. at 17

shutterstock_281570939On September 15, 2015, the USPTO announced the “Streamlined, Expedited Patent Appeal Pilot for Small Entities.”1 This program allows small entities to expedite an ex parte appeal to the PTAB, similar to the program announced on June 19, 2015, for parties with multiple appeals pending at the PTAB.2

The first program was designed to alleviate the backlog of ex parte appeals, with the idea that much of the backlog is driven by multiple patent filers that appeal as a matter of course. This program allows appellants with multiple appeals pending before the Board to expedite review of one appeal in return for withdrawing another appeal.3 The process to participate in the “Expedited Patent Appeal Pilot” simply involves filing a petition to make special under 37 C.F.R. 41.3 to the Chief Administrative Patent Judge using Form PTO/SB/438.4 The second small entity pilot program involves a similar process again with the hope of further reducing the backlog.

Under the Streamlined, Expedited Patent Appeal Pilot for Small Entities, a petition must be filed under 37 C.F.R. 41.3 using Form PTO/SB/441 to identify the ex parte appeal sought to be made special, which must be the appellant’s only appeal pending before the Board as of September 18, 2015, and the appeal to be made special must have been docketed with the PTAB on or before September 18, 2015.5 Of course the appellant must certify that its status as a small entity or micro entity is still appropriate.6 The appellant must also agree to the disposition of all claims subject to each ground of rejection as a single group.7 Further, the appeal must not involve any claim subject to rejection under 35 U.S.C. § 112—lack of written description, enablement, or best mode, or for indefiniteness.8 Lastly, the appellant must waive any oral hearing.9

The stated goal of the small entity program is to provide a decision whether to make the appeal special within 2 months of the filing of the petition and more critically, deciding the appeal in less than 4 months from the date of the petition.10 If accomplished, this would be a striking reduction in time compared to the current pendency for appeal decisions this fiscal year, which ranges between an average of 2 to 3 years, depending on the Technology Center.11 Although, the first pilot has only been available for a short time, the USPTO published statistics on the success thus far:12 Please see the published statistics here.

The USPTO’s expedited appeal program for small entities is available for those appeals already docketed at the PTAB. Thus, the program does not appear to allow any future appellants to take advantage of an expedited appeal under this process. Presumably, the program will reduce the current backlog so future appellants also will benefit from the program, assuming that those already in the PTAB queue will take advantage of it.

1 80 Fed. Reg. 55,339 (Sept. 15, 2015), available at
2 See Expedited Patent Appeal Pilot, 80 Fed. Reg. 34,145 (June 15, 2015); USPTO, Expedited Patent Appeal Pilot,
3 Expedited Patent Appeal Pilot, 80 Fed. Reg. 34,145 (June 15, 2015).
4 Id.
5 80 Fed. Reg. 55,339 (Sept. 15, 2015). It should also be noted that the petition fee has been waived.
6 See 37 CFR 1.27 and 1.28 concerning small entity status and see 37 CFR 1.29 concerning micro entity status.
7 Id.; see 37 CFR 41.37(c)(1)(iv) concerning the treatment of claims subject to the same ground of rejection argued together as a group.
8 80 Fed. Reg. 55,339 (Sept. 15, 2015).
9 Id.
10 Id.
11 Id. at pages 20-21
12 USPTO, Expedited Patent Appeal Pilot,

shutterstock_454731811Claim 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

In the instances where the same claim terms have been construed by both the PTO and the district court, the most practical effect has been the influence on the PTAB of the district court’s proceedings. Sometimes the PTAB has simply adopted a district court’s claim construction.6 In Google v. Simpleair for example, the PTAB looked at the district court’s construction of nine claim terms in the co-pending litigation and determined that each construction was “consistent with their broadest reasonable interpretation in light of the specification.”7 The PTAB thus adopted the district court’s constructions, but perhaps they were inclined to do so as both parties had requested this of the PTAB.8 Even if the PTAB does not adopt the district court’s claim construction, the patent owner’s arguments in the district court can be considered by the PTAB, as discussed more fully below, which in turn can make the PTAB a more favorable forum for the patent challenger.

Furthermore, the PTAB’s claim construction can provide guidance to the district courts, which some jurisdictions are more willing to consider than others. For those jurisdictions willing to consider the PTAB’s construction, this could at least provide early insights for both sides.9 Additionally, the Federal Circuit has noted that “[t]he broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.”10 Therefore, a PTAB’s construction can be viewed as setting an outer bound.

Even when the PTAB and the district court take their different analytical pathways, the end result may still be the same. The Federal Circuit noted this would have been true in their first reversal of a PTAB IPR decision this past June.11 In Proxyconn, the Federal Circuit determined that the PTAB under the BRI standard erred as the unpatentability of eight of the claims was based on an “unreasonably broad construction” of certain terms.12

The BRI standard is more favorable to PTAB petitioners as more prior art may be used to invalidate the patent. Additionally, patent owners should proceed with caution in district court when advancing an infringement position that relies on a broad claim construction. Anyone may cite to the PTO “statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.”13 Thus, a patent owner may box themselves into a claim construction position that allows for more prior art in PTO proceedings assessing patentability.

Further variations in the two standards and the practical implications will become clearer as the PTAB continues its unpatentability rulings. For now, it is vital for practitioners to evaluate planned constructions under each standard early on—especially in the context of parallel proceedings.

1 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
2 37 C.F.R. § 42.100(b), 200(b), 300(b) (2012); see also Microsoft Corp. v. Proxyconn, Inc., 2014-1542, -1543, slip op. at 6 (Fed. Cir. June 16, 2015) (reaffirming the BRI standard “was properly adopted by the PTO regulation.” (citing In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015))).
3 Phillips, 415 F.3d at 1316 (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F. 3d 1359, 1364 (Fed. Cir. 2004)); see also SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001, slip op. 7-19 (PTAB June 11, 2013) (Paper 70) (discussing the history of the broadest reasonable interpretation standard and its applicability to AIA proceedings); Manual of Patent Examining Procedure (M.P.E.P.) § 2111.
4 Phillips, 415 F.3d at 1313.
5 Id. at 1315, 1317; see also Grant Ford, Broadest Reasonable Interpretation vs. Ordinary and Customary Meaning: – Challenges Introduced by Applying Different Claim Construction Standards at the PTAB and District Courts, SUGHRUE (Sept. 11, 2014), (describing the extrinsic evidence considered by the court in Starhome GMBH v. AT&T Mobility LLC, 743 F.3d 849 (Fed. Cir. 2014) and how a different result may be reached on the intrinsic record).
6 Google Inc., v. Simpleair Inc., CBM2014-00054, slip op. 9 (PTAB May 13, 2014) (Paper 19).
7 Id.
8 Id.
9 See Andrew J. Lagatta & George C. Lewis, How Inter Partes Review Became A Valuable Tool So Quickly, LAW360 (Aug. 16, 2013 12:01 PM), http:// (describing the quick timeline for IPRs mandated under the statute, which “may have significant effects on how the parties see the merits of the infringement case and further lead to early resolution of cases”).
10 Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. App’x 864, 869 (Fed. Cir. 2014), reh’g denied (Oct. 30, 2014).
11 Microsoft Corp. v. Proxyconn, Inc., 2014-1542, -1543, slip op. at 15 n.1 (Fed. Cir. June 16, 2015) (noting that they would have reached the same result if they applied the Phillips’ framework); see also IPR2012-00026, IPR2013-00109.
12 2014-1542, -1543, slip op. at 9, 12.
13 35 U.S.C. § 301(a)(2) (2012).