Review Of 2015 Federal Circuit Decisions Addressing IPR Claim Construction And Procedural Issues

2015 was a busy year for post-grant review appeals at the Federal Circuit and produced notable opinions in the areas of claim construction, IPR procedural issues, and the constitutionality of IPRs in general. In 2015, the Federal Circuit reversed the Board's claim construction in an IPR for the first time, and found that IPRs do not violate Article III and the Seventh Amendment of the Constitution. Below is a summary of some of the most important Federal Circuit decisions of the year regarding post-grant proceedings.

Claim Construction In 2015, the Federal Circuit reversed the Board's claim construction in both Microsoft v. Proxyconn, 789 F.3d 1292 (Fed. Cir. 2015), and Straight Path IP Group, Inc. v. Sipnet EU S.R.O., No. 15-1212, Slip Op. (Fed. Cir. Nov. 25, 2015). These cases represent the first and second time that the Federal Circuit has reversed a Board decision cancelling claims of a patent in an America Invents Act proceeding. In Proxyconn, the Federal Circuit reversed in part, and Straight Path IP Group saw the Federal Circuit's first full reversal.

In Proxyconn, the Federal Circuit held that “[b]ecause we are bound by the decision in Cuozzo, we must therefore reject Proxyconn's argument that the Board legally erred in using the broadest reasonable interpretation standard during IPRs.” The court further explained that there are indeed limits to the broadest reasonable interpretation standard, by adding “[t]hat is not to say, however, that the Board may construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.” Thus, “[t]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation.” Importantly, the court stated that in construing claims under the broadest reasonable interpretations, the Board should “consult the patent's prosecution history,” which is contrary to the prevalent belief that prosecution history is unnecessary when giving claims their broadest reasonable interpretation.

In Straight Path IP Group, the Federal Circuit faulted the Board for turning to the patent specification to support a claim interpretation at odds with the plain meaning of the claim language itself. In making this determination, the Federal Circuit highlighted the clarity of the terms at issue, and then explained that the Board erred by not addressing thefacially clear meaning of the claim language and...