PATENT LAW “WHILE THE
LEGISLATION IS AIMED AT PRESERVING
PATENTS, THIS MAY LEAD TO MORE STAYS AT THE DISTRICT COURT SETTING, WHERE INFRINGEMENT IS BEING CONTESTED.”
Research for Our Nations Growth Patents Act (STRONG Act), proposes to use a district court claim construction, with the presumption of validity making it tougher for the petitioner to prove that the claims should be cancelled. It is not clear if such a bill will pass soon, given the controversial fee diversion provision aimed at abusive filings by ‘trolls’. However, if a PTAB trial did implement a
Phillips/Markman-like hearing, assuming it was right aſter the institution decision this may actually create problems for the patent owner. Because an IPR or PGR is relatively quick, this means that any claim construction would necessarily have to be early and therefore be determined before any claim construction in a concurrent litigation. Tis can give a district court judge incentive
to (1) more likely stay the litigation (typically an infringement suit) pending the outcome of the IPR; and (2) give more deference to the claim construction in the IPR/PGR due to the similarities of the claim construction. In other words, while the legislation is aimed at preserving patents, this may lead to more stays at the district court setting, where infringement is being contested. Unless Congress changes the one-year timeline (institution to the final written decision is one year or less), the STRONG Act’s passing will lead to this fast claim construction determination in the PTAB trial. To avoid a district court from absolutely adopting the PTAB claim construction, a new PTAB standard has be less than BRI but more than a district court standard. Otherwise, filing an IPR or PGR becomes more the rule for the petitioner (accused infringer) if there is concurrent litigation (this may already be already the case). So what can be done? Maybe more
emphasis could be added to the patent specification. Besides the mentioned case of Van Geuns, the federal circuit has actually had inconsistent positions regarding importing a limitation from the specification, as in Retractable Techs v Becton Dickinson & Co, 653 F.3d 1296 (Fed. Cir. 2011) and Arlington Industries v Bridgeport Fittings, 632 F.3d 1246 (Fed. Cir. 2011).
Inventors’ intentions Tese cases have emphasised the importance of complying with the written description requirement, but in the context of claim construction. In a concurring/dissenting opinion in Arlington, Judge Lourie stated: “Te bottom line of claim construction should be that the claims should not mean more than what the specification indicates, in one way
50 World Intellectual Property Review May/June 2015
www.worldipreview.com
gyn9037 /
Shutterstock.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100