The Federal Circuit vacated the PTAB’s construction of a claim term, underscoring the principle that proper claim construction may require a close examination of the specification and other available evidence to understand what was purportedly invented and intended to be claimed.
Claim construction in IPRs is not always dispositive, and the PTAB will often not attempt to ascertain the outer bounds of the claim when that is not needed to assess the patentability of the claims. See 83 Fed. Reg. 51,340, at 51,353. However, in IPRs where claim construction may be the difference between patentability and not, parties must ensure the factual record gives the PTAB what it needs to construe the claims properly.
In Intel v. Qualcomm (Nos. IPR2018-1334, IPR2018-01335, IPR2018-01336), the petitioner challenged all claims of a patent related to multi-processor systems. The PTAB concluded that the petitioner failed for many of the claims based on the PTAB’s construction of the claim term “hardware buffer.”
The Federal Circuit (Nos. 2020-1828, 2020-1867) vacated the PTAB’s claim construction of this term and remanded for further proceedings. Reviewing de novo the PTAB’s application of the broadest reasonable interpretation standard, the Court held that the Board’s claim construction analysis was inadequate.
The Court noted that the term “hardware buffer” had no clear and undisputed ordinary meaning, that the parties did not make any arguments related to the prosecution history, and that an analysis of the claim language by itself did not provide sufficient clarity. Thus, the Court reasoned, the PTAB needed to do a closer review of the specification and other available evidence to ascertain how the construed term related to the claimed technological advancement.
For example, the Court found that the PTAB failed to analyze sufficiently how the use of the claim “hardware buffer” was an improvement over the prior art described in the specification, which included temporary buffers that could be in system memory and could involve extra copying steps.
The Court suggested that prior testimony from an inventor about the challenges the invention overcame might be relevant to construing the term. The Court even suggested that the record might be reopened to allow for additional evidence relevant to this inquiry, including perhaps additional expert testimony.
- Petitioners and patent owners should ensure that their claim construction arguments are sufficiently linked to the specification and other forms of evidence, such as expert testimony, that explain how the disputed terms relate to the claimed technological advancement over the prior art.
- Where the intrinsic evidence in the claims and the specification are not sufficient to construe a claim term, petitioner and patent owners should introduce the evidence needed to explain how the claim term related to the purported invention and what was intended to be claimed. For example, testimony from an inventor and explanation of the technology by an expert could be relevant.