Sunday, November 8, 2009

BPAI panel says infringement case irrelevant in appeal

According to Ex parte Alms, Applicants should be careful in "citing and relying on inter partes infringement cases for claim construction principles when claims are before the USPTO." What's the problem? Different standards of claim construction.

The standard used by the BPAI has a nifty name: "broadest reasonable construction." The standard used in an infringement case doesn't have a nifty name, but for the purpose of contrasting with the BPAI standard, the standard can perhaps be summed up as something like: a construction consistent with the specification, as viewed by one of ordinary skill in the art. The important point being that the prosecution standard is intended to be broader than the infringement standard.

If taken to an extreme, this seems to imply that the only relevant Federal Circuit claim construction cases are those that review BPAI cases (i.e., "In re" cases). If that's so, someone should update the MPEP, since §2111 contains a number of cites to infringement case law.

I read a lot of BPAI cases, and I've seen this warning about improper reliance on case law only a few times. Therefore, I don't think I'll change my practice yet.

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