In IPRs, It Pays Off to Request Constructions of Disputed Terms

Firm Thought Leadership

Anticipation is a fact specific inquiry that requires the Federal Circuit to deferentially review factual findings made by the Patent Trial and Appeal Board (PTAB) in inter partes reviews (IPRs). Because of the factual nature of the analysis, the Federal Circuit typically does not evaluate prior art in the first instance to determine whether or not a claim element is disclosed. In a rare exception to this general rule, in Homeland Housewares, LLC v. Whirlpool Corporation1 the Federal Circuit construed a claim term that the PTAB determined did not need to be construed and applied its new construction to the prior art to determine that a claim was anticipated. The Court’s opinion highlights the importance of requesting explicit constructions of disputed terms in IPRs.

To read the full article on our PTAB Trials Blog, click here.

*Jesse Adland, a former Baker Botts associate, assisted in the preparation of this article.

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