Must a Petition for Inter Partes Review Construe the Patent Claims?

Scott Daniels | January 3, 2013

The Patent Owner in Micron Technology v. The University of Illinois, IPR2013-00008, has asked the APJs to reject the Requester’s Petition because it fails to construe the challenged claims.

The Patent Owner first cites the Patent Office Rules as requiring an explanation of “how the challenged claim is to be construed” and “how the construed claim is unpatentable.”  37 CFR 42.104(b)(3)(4).  It then refers to the related passage from the PTO’s Trial Practice Guide which states that

a petitioner must identify each claim that is challenged and the specific statutory grounds on which each challenge to the claim is based, provide a claim construction for the challenged claim, and state the relevance of the evidence to the issues raised. (Emphasis added).

            Despite these requirements, the Patent Owner asserts that the Petition “only makes reference to one of the terms in its section on claim construction.  And that is regulated [sic] to a footnote.”  This brief treatment of the meaning of the claims contrasts with a claim construction paper filed by the Requester in a parallel infringement action in which twelve claim terms were identified as needing interpretation.  The Patent Owner concludes that the Requester should not be allowed “unfettered license to ignore known interpretations that differ from the plain meaning” of the claims.

Certainly, claim construction is the threshold step in any analysis of the patentability of claims.  On the other hand, one wonders whether the APJs will take the extreme measure of denying the Petition or merely require some supplementation.  Or even deny the Patent Owner’s request outright.

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