Terminal Disclaimer to Avoid BRI Standard “Held in Abeyance” Pending Final Decision in IPR

The Board sua sponte ordered that the terminal disclaimer filed in the patent owner's application for the challenged patent be held in abeyance, and that the challenged claims in the instant proceeding continue to be given their broadest reasonable interpretation. "It is not feasible, at this late stage of the proceeding, to change the standard by which the challenged claims will be interpreted, as all of the arguments and evidence we have before us have applied the broadest reasonable interpretation standard. Changing the claim interpretation standard would require us, in essence, to start this inter partes review over again. We determined whether to institute a trial based on the broadest reasonable interpretation standard, Petitioner argued that the challenged claims are unpatentable based on that standard, Patent Owner argued that the challenged claims are patentable based on that standard, and both parties’ declarants applied that standard. If we now were to reverse course and apply a different claim interpretation standard, new briefing, new declarant testimony, and new depositions would need to be completed based on the new standard, and all of the resources expended by the parties and the Board to date would be wasted."

Petition for Inter Partes Review by Amkor Technology, Inc., IPR2013-00242 (PTAB May 22, 2014, Order) (Arbes, APJ)