On February 10, 2014, the Patent Trial and Appeal Board (PTAB) issued a group of four final written decisions to inter partes review (IPR) trial proceedings involving Intellectual Ventures Management, LLC (“IVM”) and Xilinx, Inc. (“Xilinx”). IVM filed four IPR petitions challenging the patentability of claims in four patents owned by Xilinx. The four final written decisions were entered just prior to the one year anniversary of the institution date, as required by statute. The PTAB has only issued two other final written decisions in IPR trial proceedings prior to the four IVM/Xilinx final decisions.
In line with the first two final IPR decisions, the PTAB largely maintained its findings from the institution decisions to the final written decisions and cancelled each of the challenged claims for which a trial was granted.
For example, the PTAB maintained the claim construction from institution to the final written decision, even though the Patent Owner argued for a different interpretation after the institutions. Interestingly, Xilinx pointed to statements in the specification that described figures supporting its narrower construction. However, the PTAB noted that these were merely exemplary embodiments and did not support Xilinx’s proposed interpretation. (IPR2012-00018, Paper 35, pages 12-13.) According to the PTAB, such “can be” language may be considered “an attempt to maintain a reasonably broad scope that would encompass other (i.e., non-surrounding integrated circuit package) structures.” Id. The PTAB recalls that, in the absence of claim language carrying a narrower meaning, it should only use the specification or prosecution history to limit a claim when those sources expressly disclaim a broader meaning. Id. at 14 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
As the PTAB continues to develop a whole new body of law based on post-grant trial proceedings, there is still some uncertainty as to how the PTAB will handle various issues of first impression. However, given the timing constraints and estoppel implications of post-grant trial proceedings, petitioners, in particular, may find some comfort in the PTAB’s consistency between the decisions on institution and the final written decisions.