Prosecution Methods for the AIA Period

by Dennis Crouch

The Federal Circuit’s new declare building resolution in Monterey Research, v. STMicroelectronics highlights the continued problem of patentees to acquire slim declare building on the PTAB throughout IPR. Sometimes, patentees are in search of slim declare building so as to higher differentiate the patent claims from the asserted prior artwork.  And, though a patentee might expressly amend the claims, such an motion might create issues in litigation corresponding to eliminating again damages and probably creating an estoppel downside. Broad declare interpretation on the PTAB was rampant within the early days as the executive courtroom utilized the PTO commonplace “broadest affordable interpretation.” Extra just lately, the PTAB has moved to the narrower unusual that means commonplace, however the change has not been sufficient for a lot of patentees to outlive the IPR course of.

Monterey’s U.S. Patent No. 6,534,805 covers an improved SRAM cell design for laptop reminiscence.  The declare requires “a single native interconnect layer comprising native interconnects equivalent to bitlines and a worldwide wordline.”  Though not expressly included within the declare, the patentee argued that the interconnect layer must be construed to require lateral routing of alerts alongside the interconnect layer.  Monterey pointed to a number of parts from the prosecution historical past that assist its rivalry.

• Determine 3 of the patent (above) exhibits the kind of lateral routing of alerts  being mentioned. Throughout prosecution, Monterey distinguished its declare from the prior artwork by referencing Determine 3 and stting that “all of the runs [i.e. interconnects] for the bitlines, Vcc, Vss and the wordline are supplied within the single layer of Fig. 3” in distinction to Osada’s multi-layer association.
• In reality, the “single native interconnect layer” limitation was particularly added to the claims so as to distinguish the invention from Osada.

The bulk opinion authored by Decide Chen and joined by Decide Taranto rejected the patentee’s arguments — offering two key conclusions:

1. The prosecution historical past statements didn’t clearly restrict the declare scope however somewhat had been too ambiguous and obscure to represent a disavowal of declare scope.
2. Determine 3 doesn’t clearly require lateral routing.  Fairly, Determine 3 solely confirmed a single contact level on every related interconnect, somewhat than contacts on each ends that might necessitate lateral routing alongside the size.

Decide Dyk’s dissent, however, pointed to the prosecution historical past statements referencing Determine 3 as limiting the declare scope to lateral routing to beat the prior artwork.  In contrast to the bulk, Decide Dyk regarded extra to the aim and context of the prosecution historical past somewhat than simply the plain language.

Unpatentability Affirmed.

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The usual typical knowledge for patent prosecution is {that a} extra restricted file is best than one stuffed with prosecution historical past statements and declarations.  That method has the profit and tendency to result in broader declare building. However, this case represents one other instance of how that broad method can come again to chew the patentee — particularly in right now’s world of AIA trials.

The standard patent prosecution knowledge has lengthy been that fewer prosecution historical past statements are usually higher — as a result of they permit for broader declare building down the street. This method stems from the will to keep away from unintentional disavowals or limitations on declare scope. Nonetheless, as this case illustrates, that technique can come again to hang-out patentees in AIA trials.

Within the present post-AIA setting, patent claims are incessantly challenged in inter partes opinions (IPRs) earlier than PTAB judges who’re prepared and keen to delve into the prior artwork to in an in depth obviousness evaluation. Thus, patentees right now discover themselves arguing for narrower interpretations to keep away from prior artwork — however are missing clear prosecution historical past assist. Obscure or ambiguous statements meant to protect declare scope have been be insufficient for this process as are deliberately broad and ambiguous declare limitations. This method left Monterey’s claims weak to invalidity in gentle of the broader interpretation.