Patent Owners Beware: Federal Court Arguments for Broad Claim Construction May Be Used Against You in Post Grant Proceedings

Patent applicants know to think carefully about the statements they make to the USPTO while working toward patent issuance. The reason? Statements made to the USPTO during patent prosecution have historically been fair game as evidence of claim limitations in issued patents. Now, thanks to the AIA, patent owners must be equally as careful when making statements about the claims of their issued patents when in Federal court. The reason? In a post grant proceeding, a party challenging the patent can use the patent owner’s statement against them as evidence that a claim is unpatentable.

Under 35 U.S.C. § 301(a)(2), any person at any time may cite to the USPTO “statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.” The legislative history explains that Congress adopted this provision to “counteract the ability of patent owners to offer differing interpretations of prior art in different proceedings,”and, moreover, to “allow the Office to identify inconsistent statements made about claim scope—for example, cases where a patent owner successfully advocated a claim scope in district court that is broader than the broadest reasonable construction that he now urges in an inter partes review.

Section 301(a)(2) is Congress’ attempt to keep patent owners honest. This provision prevents patentees from first arguing that a claim’s “correct” construction is extremely broad before the district court (in an effort to ensure that their claims cover the accused infringing technology), but subsequently arguing that the claim’s “broadest reasonable construction” is narrower in post grant proceedings before the USPTO. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (clarifying that district courts will give disputed terms their “correct” construction, while the USPTO will give claim terms their “broadest reasonable construction.”).

Accordingly, patent owners litigating in Federal court should take care when characterizing the scope of patent claims, lest those characterizations undermine their ability to defend that patent in post grant proceedings. Though Section 301(a)(2) does not apply to statements made in the U.S. International Trade Commission (ITC), since the ITC is not a Federal court, prudence dictates that patentees exercise caution in making statements about claim scope in that forum, as well.