August 11, 2014
Patent Expiry During IPR Means Phillips, not BRI, Applies
We previously discussed one Patent Owner’s attempt to avoid the “broadest reasonable interpretation” (BRI) claim construction standard by disclaiming the remainder of the patent-at-issue’s term. While some uncertainty about that technique remains, what is clear is that when a patent in an IPR expires during the pendency of the proceeding, the limitations of that patent’s claims are construed pursuant to the Phillips claim construction standard. That is, claim terms are given their ordinary and customary meaning as understood by a person of ordinary skill in the art. In Square, Inc. v. Carl Cooper (IPR 2014-00157), an example of this principle is seen in action, as the patent at issue (U.S. Pat. No. 7,828,207) was set to expire prior to the Board issuing the final written decision.
Both parties to the proceeding filed a Joint Stipulation stating that the broadest reasonable interpretation of the claims did not apply given this pending expiration. Previously, the Board had construed the claim terms according to their broadest reasonable interpretation, as is the case with all IPR proceedings of unexpired patents. In the end, though, it was a distinction without a difference because, despite this shift from BRI to Phillips, the Board found that no changes to previous claim constructions were necessary.