In the wake of SAS Institute v. Iancu, the PTAB has sometimes expanded pending IPRs to include previously un-instituted grounds. But can the PTAB rely on SAS to retroactively deny institution? A recent decision says yes, in at least some circumstances. And while the facts of this case are unusual, it nevertheless demonstrates that petitioners should be cautious when relying on SAS to try to induce the PTAB to reconsider grounds that it didn’t originally find persuasive.
A recent Federal Circuit decision illustrates the dangers of construing claims too broadly when applying the “broadest reasonable interpretation” (BRI) standard. Petitioners especially must remember that the BRI of a term must be “reasonable” in light of the specification. Relying on broad constructions that fail to account for narrowing language in the specification can lead to defeat.