Failure to Argue Differing Claim Language of Similar Claims Haunts Appellant

PTAB practitioners must always be mindful of the Board's longstanding practice to treat grouped claims as standing or falling together. That is, claims should be argued separately where the claims are phrased similarly, but with some deliberate grammatical or additional term difference to distinguish scope. In those cases, it is important to discuss the implications of the grammatical differences. Simply reciting a claim limitation, and asserting that the limitation is/is not found in the prior art, is not taken by the Board as a separate argument for patentability.

That said, such layered arguments may fall prey to the tight space constraints in AIA trial proceedings where more pressing arguments are necessary.

For example, one of the more particularly tricky aspects of AIA trial practice prior to May of 2016— at least for petitioners— was fitting all of petitioners arguments within the fifteen pages allocated for a Petitioner Reply by the PTAB. As a result of the limited real estate, some petitioner arguments that might have been otherwise made were often cut for space constraints. Fortunately, in May of 2016, the fifteen page limit was increased to twenty-five pages.

Yesterday's decision of the Federal Circuit emphasized the risks of claim grouping; perhaps a reflection of the earlier AIA trial briefing constraints.

In HTC Corp. v. Cellular Communications Equipment (here), the Court considered the language of similar method and apparatus claims (claims 1 and 24). In analyzing the key claim construction dispute of the apparatus claim, the Court determined that this claim required separate components where the prior art only showed a single component. Arguably, method claim 1 was broader, and failed to include some of the key language driving the Court's two-component construction for claim 24. However, rather than reach that issue on its own, the Court found that the Appellant had forfeited that argument, explaining:

In the particular circumstances presented, we will not consider giving claim 1, in the respect at issue, a different scope from that of claim 24, which, we have concluded, requires two separate components . . . . In the PTO, [appellant] did not “fairly put [the Board] on notice as to the substance of” any request to distinguish claims 1 and 24 regarding this critical issue of scope. . . .

It is not plausible that [appellant] inadvertently overlooked the potential for a half win, which it might well have deliberately chosen to discourage by taking an all-or-nothing approach. Moreover, the IPR regime at issue places a special premium on efficient Board resolution of patentability challenges. . . . In these circumstances, we will not decide whether claim 1 should be accorded a different scope from that of claim 24 in the respect at issue.

The majority explained that forfeiture determinations are fact specific, and emphasized the fact that appellant took a position before it (at oral argument) that claims 1 and 24 were not being argued as having a different scope on appeal.

The dissent took issue with the forfeiture determination only, explaining that the majority decision was "incorrect and troubling for future cases." The dissent insisted that the petitioner had argued claim 1 separately:

For example, in its IPR petition to the Board, [appellant] presented a detailed claim chart and specific disclosures found in the [prior-art references] that, in its view, made each limitation obvious for each claim at issue; in particular, HTC presented a different set of disclosures found in the prior art with respect to claim 1’s diverting limitation than to claim 24’s diverting limitation. . . . In another example, in the Petitioner’s Reply to the Board, [appellant] argued that “CCE’s statement that . . . D’Aviera does not disclose anything . . . that could perform the intervening diverting step is misguided. The language of claim 1 does not preclude the same structure from performing the diverting step and the controlling step.”

(emphasis in original)

While AIA trial petitions routinely cite to differing portions of a reference for similar claims, it remains unclear how this may/may not have been changed by the Board at institution.

As to appellants Reply arguments, it is worth noting that the Court considered a simialr issue in In re Lovin, 652 5 f . 3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably interpreted its rules of practice as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art" to constitute a separate argument). While an analysis of a rule construction as opposed to a forfeiture scenario, the Court has previously endorsed the Board's view of such citations as not being a separate argument.

While space constraints for Petitioner Reply's are less worrisone than a year ago, petitioner's faced with cutting brief content might cite to HTC to justify an extension to the page limit; especially in those cases where a Patentee is arguing a significant number of individual claims.

Scott A. McKeown is an author of the Patents Post Grant.