In a final written decision in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) determined that under the broadest reasonable interpretation claim construction rule, the petitioner demonstrated by a preponderance of the evidence that several claims of the patent-in-question were unpatentable on grounds of anticipation and obviousness.  EMC Corp. v. PersonalWeb Technologies, LLC, Case IPR2013-00082 (PTAB, May 15, 2014) (Zecher, APJ).

EMC petitioned for review of a patent relating to a data processing system that identifies data items using substantially unique identifiers.  The patent further covers the process of examining the identities of a plurality of data items in order to determine whether a particular data item is present in the data processing system.

In its analysis, the PTAB noted that it construed terms under the broadest reasonable interpretation in light of the patent specification, and that claim terms are given their ordinary and customary meaning as understood by a person of skill in the art.  Following the PTAB’s initial claim construction, i.e., on institution, the parties accepted most of the PTAB’s constructions, with the exception of one term.  PersonalWeb contested the PTAB’s construction of a means-plus-function term, arguing that the PTAB’s claim construction was overly broad and did not reflect features disclosed in the specification as being necessary to perform the claimed function.  PersonalWeb challenged the PTAB’s claim construction, but did not provide alternative arguments as to patentability in the event the PTAB maintained its construction.

The PTAB disagreed with PersonalWeb’s argument that the PTAB’s previous construction was overly broad, noting that the functions PersonalWeb believed were necessary to perform the claimed function were, in fact, merely preferred embodiments disclosed in the patent’s specification.  The PTAB concluded that PersonalWeb’s proposed construction was “not commensurate in scope” with the broadest reasonable construction.

Practice Note: Be extremely careful when basing patentability arguments on claim constructions that do not conform to those issued by the PTAB on institution.  The failure to develop alternative arguments exposes the party to the risk that the PTAB will ignore patentability arguments inconsistent with its initial construction.