Google Inc. and Yahoo! Inc. v. CreateAds LLC, Decision Regarding Standard for Claim Construction IPR2014-00200
Tuesday, July 22, 2014

Takeaway: Claim terms of an unexpired patent are interpreted under the broadest reasonable interpretation (BRI) standard, where claim terms of an expired patent are construed using the so-called Phillips standard.

In its Order, the Board addressed the appropriate claim construction to be utilized in the instant proceeding, as well as a Motion for Pro Hac Vice admission.

The Board instituted inter partes review of claims 1-20 of the ’320 Patent on May 9, 2014.  The Board construed certain claim terms in its Decision to Institute using the “broadest reasonable interpretation” (BRI) standard.  The ’320 Patent then expired on July 1, 2014.

As stated by the Board, “[b]ecause the claims of an expired patent are not subject to amendment, the Board’s review of such claims applies the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).”  Under the Phillips standard, “words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention. Id. at 1312.”  Moreover, “[n]o presumption of validity is applied and Petitioners’ burden is evaluated under the preponderance of evidence standard.”

In view of the expiration of the ’320 Patent, Patent Owner requested (1) authorization to file a motion to terminate the instant proceeding (because the BRI claim construction standard was cited by Petitioner, rather than the Phillips standard used for expired patents, in the Petition) or, alternatively, (2) authorization to file a motion requesting reconsideration of the Board’s initial claim construction in light of expiration of the ’320 Patent.

The Board denied these requests by Patent Owner, because it deemed that application of the standard for construction of expired claims did not change its construction of the claim terms construed under the BRI standard in the Board’s Decision to Institute. The Board went on to note that “[t]he parties may address the claim-construction issues in view of the foregoing in the Patent Owner’s response and the Petitioners’ reply.”

As for the other issue addressed in this Order, Patent Owner had filed a Motion for Pro Hac Vice admission of Mr. Daniel Hipskind.  The Board granted the motion, but at the same time, took time to note that both the motion and Mr. Hipskind’s declaration referenced the previous USPTO Code of Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary jurisdiction under 37 C.F.R. §§ 11.19(a), when instead they should have referenced the current Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in Part 42 of the C.F.R., and the Office’s Code of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq., and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).  As noted by the Board, “the Final Rule that took effect on May 3, 2013 removes part 10 of title 37, Code of Federal Regulations, and adopts new Rules of Professional Conduct.”

Google Inc. and Yahoo! Inc. v. CreateAds LLC, IPR2014-002000 
Paper 19: Order on Conduct of the Proceeding 
Dated: July 16, 2014
Patent: 5,535,320
Before: Meredith C. Petravick, Jennifer S. Bisk, and Patrick M. Boucher
Written by: Boucher

 

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