PTAB to Consider Whether Terminal Disclaimer Undermines Institution of IPR Based Upon BRI Standard

During a conference call, the Board ordered additional briefing on the patent owner's intent to file a terminal disclaimer of the remaining term of the challenged patent to avoid application of the broadest reasonable interpretation standard. "Patent Owner stated that it intends to file a terminal disclaimer of the remaining term of the [challenged] patent, such that the patent will be expired and the Board should not apply the broadest reasonable interpretation standard to the challenged claims. Patent Owner requested authorization, if the terminal disclaimer is filed, to file a motion to terminate the proceeding on the basis that the Board applied the broadest reasonable interpretation standard in the decision to institute this inter partes review. . . . Petitioner asserted that Patent Owner should have raised the issue in its response when Patent Owner had the opportunity to state how it believes the challenged claims should be interpreted. . . . The present situation appears to be an issue of first impression in inter partes reviews. As such, we are persuaded that briefing from the parties is warranted. . . . In their papers, the parties should state what action(s), if any, they believe the Board should take with respect to the terminal disclaimer and with respect to this proceeding in general."

Petition for Inter Partes Review by Amkor Technology, Inc., IPR2013-00242 (PTAB April 14, 2014, Order) (Arbes, APJ)