The PTAB recently denied a petitioner’s request for inter partes review of a competitor’s surgical device patent, stating that the petitioner failed to provide a claim construction necessary to meet its burden to show a reasonable likelihood that at least one claim is unpatentable.  OrthoPediatrics Corp. v. K2M, Inc., IPR2018-01548, Paper 9 (P.T.A.B. March 1, 2019). The Board emphasized that petitioner’s failure to provide a claim construction was further compounded by the fact that the petitioner took an inconsistent position before the district court, where it argued for a narrower construction.  Given its inconsistent positions, petitioner should have provided an explicit claim construction or explained why the limitations are not subject to the narrow construction advanced before the district court.  The Board emphasized that “our claim construction has generally been informed by a district court’s claim construction, and we will continue to consider decisions of other tribunals construing claim terms at issue.”

The Board’s decision follows on the heels of the USPTO’s October 11, 2018 Final Rule, which revised the claim construction standard for interpreting claims in IPR, PGR, and CBM proceedings before the PTAB.  The new rule replaces the broadest reasonable interpretation standard with the same standard applied in federal courts during claim construction proceedings for any petition filed on or after November 13, 2018. The rule further permits the PTAB to consider any prior claim construction determination in a civil action that is timely made of record in the IPR proceeding.

The decision suggests that parties to IPR proceedings would be wise to adopt consistent claim construction positions before both the Board and the federal courts.  Parties wishing to adopt a different construction before the Board should be sure to substantively address the district court’s construction of any terms likely to be a focal point of the IPR proceeding.