In Personal Web Technologies, LLC v. Apple, Inc., Case No. 2016-1174 (Fed. Cir. Feb. 14, 2017), the Federal Circuit upheld the PTAB’s construction of disputed claim terms, but did not resolve a dispute over whether the broadest-reasonable-interpretation standard (BRI) or Phillips standard should apply when the challenged patent expires shortly after the PTAB issues its final written decision. Despite the correct claim construction, the court vacated the decision and remanded the case to the PTAB for reconsideration of the merits of its decision on obviousness.
Apple filed an IPR petition challenging claims of Personal Web’s patent directed to methods of locating data and controlling access to the data by giving a data file a substantially unique name that depends on the file’s content. In determining that the challenged claims were unpatentable for obviousness, the PTAB construed the claim term “content-based identifier” and related terms, applying the BRI standard.
On appeal, Personal Web argued that the PTAB’s constructions were incorrect, and that the PTAB should have applied the Phillips standard, because the challenged patent expired after the PTAB issued its final written decision and while a rehearing request was pending. Personal Web also argued that the court should apply the Phillips standard on appeal. The USPTO Solicitor intervened in the appeal to defend the PTAB’s practice of applying the BRI standard for a patent that does not expire until after the final written decision.
The court determined that the PTAB correctly construed “content-based identifier” and that this construction would be correct under either the BRI or Phillips standard. Accordingly, the court determined that it “need not and do[es] not resolve [the] dispute” over which standard should apply. The opinion appears to be inconsistent with an earlier, non-precedential decision in an inter-partes reexamination appeal that applied the Phillips standard to construe claims that the PTAB had construed under the BRI standard, because the patents expired after the PTAB issued its decision. Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. Appx. 864 (Fed. Cir. 2014) (non-prec) (“We reach this conclusion after applying the Phillips claim construction framework, as the patents are now expired.”).
In view of this decision, parties to an IPR or other AIA trial proceeding in which the challenged patent will expire shortly after the PTAB issues its final written decision should include claim construction arguments under both the BRI and Phillips standards. The decision makes clear that the issue of which claim-construction standard applies in that situation remains an open question, and is a reminder that “non-precedential” Federal Circuit decisions are not binding on the court or the PTAB.