Wednesday, January 27, 2010

Effect of BPAI claim construction in litigation

In an earlier post (here), I discussed the BPAI Ex Parte Jenkins decision, in which the Board construed the claimed "storage space" to be bigger than a rivet, given the teachings of Applicant's spec.

Would the Applicant have a hard time arguing in litigation that an accused product with a tiny storage space infringes? What about a storage space big enough to hold a couple of fishing flies? That's bigger than a rivet, but not by much.

Or is the Board's construction irrelevant in litigation? If so, why? Can't you say that the size of the storage space was what distinguished over the reference, so a sort of prosecution history estoppel applies, even though it was the Board that made the distinction? Or is the estoppel doctrine not relevant unless the Applicant argued the size of the storage space was a patentable distinction?

I don't know the answer to these questions. I'm just thinking out loud.


  1. Interesting question. My first thought is that if I didn't say it, then it can't be held against me with prosecution history estoppel. However, it's easy to see how a court would find that since the Board construed the claim a certain way, if the Applicant did not rebut the decision of the Board in some manner, the Board's decision could be held to have been implicitly agreed to by the Applicant. I think this is poor policy, but it would certainly behoove an Applicant to explicitly disagree with the claim construction of the Board in the subsequent response.

  2. Disagreeing with the Board's claim construction
    could be kinda tricky. In Jenkins (the fishing equipment case), the Examiner had an unreasonably broad construction and it was the Board's narrower construction that got the rejection reversed. In that case, you can't really disagree that the claim construction is "space at least *slightly* bigger than a rivet", can you?

    Now that I think about this more, even if BPAI construction is irrelevant in litigation, the underlying facts are still relevant. Using the facts of Jenkins, asserting the patent against an accused device with a storage space the size of a rivet/fishing fly seems problematic, because such a claim construction would read on the prior art. So maybe the accused infringer can't take the shortcut "BPAI already decided" and must instead make the underlying argument "such a construction reads on prior art".