The Patent Trial and Appeal Board's Evolving Impact on Claim Construction

33 Pages Posted: 26 Aug 2016 Last revised: 31 May 2017

Date Written: August 24, 2016


This Article explores the potential impact the The Patent Trial and Appeal Board (PTAB) could have on broader claim construction doctrine. It starts by offering an overview of claim construction in the courts and in the USPTO. It then considers the potential unintended consequence of a particular Federal Circuit decision, Marine Polymer. Marine Polymer decided a seemingly narrow question: whether the defense of intervening rights could be triggered only by a narrowing amendment at the USPTO or whether a disclaimer of claim scope could also create intervening rights. The court decided the former such that disclaimers of claim scope, absent an amendment, do not trigger intervening rights. A number of PTAB decisions have taken this holding more broadly, prohibiting parties in IPR proceedings from arguing for any disclaimer. Patent holders in this position can be in a bit of a bind because the PTAB has also been very reluctant to allow patent claim amendments during IPR proceedings. If the Federal Circuit agrees with the PTAB’s approach, it could signal a waning of the use of prosecution disclaimer.

The PTAB’s approach presents some interesting issues that the next part of the Article explores. It examines the difference between a formal claim construction by an examiner or the PTAB versus the seemingly implicit construction that is reflected in prosecution disclaimer doctrine. At times the Federal Circuit has noted it is not bound by USPTO constructions yet, in estoppel-like fashion, it does bind the patent holder to potentially narrowing arguments made during a USPTO proceeding. What really is the difference? And if the USPTO is increasingly performing formal claim construction, what role, if any, remains for prosecution disclaimer? Could the statutory estoppel provisions and collateral estoppel step in to eliminate the use of prosecution disclaimer at least for those patents that go through IPR proceedings?

Finally, this Article explores the potential for issue preclusion to arise from PTAB claim constructions. The Supreme Court recently affirmed the use of BRI in IPR proceedings, which means the claim construction standard between PTAB post-issuance proceedings and district courts will continue to differ. Nevertheless, the potential for issue preclusion remains. The Supreme Court held, in B & B Hardware, Inc. v. Hargis Industries, Inc., that a decision by the Trademark Trial and Appeal Board (TTAB) can preclude relitigation of the issue of likelihood of consumer confusion, even though that standard varies widely across the country. This Article considers the parallel situation of PTAB claim construction determinations in light of that Supreme Court precedent, concluding that issue preclusion very well may arise from PTAB claim construction determinations.

Keywords: Claim Construction, Prosecution Disclaimer, Ptab, Patent Trial and Appeal Board, Broadest Reasonable Interpretation, Bri, Issue Preclusion, Collateral Estoppel, Marine Polymer, Hargis, B&B Hardware, IPR, PGR Inter Partes Review, Post Grant Review

Suggested Citation

Holbrook, Timothy Richard, The Patent Trial and Appeal Board's Evolving Impact on Claim Construction (August 24, 2016). Texas Intellectual Property Law Journal, vol. 24, pp. 301-332, 2016., Emory Legal Studies Research Paper No. 17-435, Available at SSRN:

Timothy Richard Holbrook (Contact Author)

Emory University ( email )

1301 Clifton Road
Atlanta, GA 30322
United States
404-712-0353 (Phone)

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