One of the more disheartening trends to Patent Owners in inter partes review proceedings is the strong willingness of the PTAB to give little or no deference to prior Patent Office proceedings relative to the patent-at-issue. This creates considerable uncertainty relative to these important assets. This issue arose again in Toshiba Corp. v. Intellectual Ventures, IPR2014-00317, US Patent No. 5,687,132, wherein the PTAB disagreed with a claim construction adopted in an earlier reexamination proceeding. The ‘132 patent relates to multiple-bank computer memories.
In the prior reexamination proceeding, the Examiner found that the claims at issue each included a requirement for a single memory, as opposed to two separate memories. Importantly, this feature was not found in the prior art and, thus, Patent Owner argued that the IPR Petition should be denied.
Pursuant to 35 U.S.C. § 325(d), in deciding whether to institute inter partes review, the “Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Under this provision, the Board was within its authority to deny the Petition based on the Examiner’s reasoning in the reexam. However, the Board opted not to take this route, as it disagreed with the Examiner’s claim construction.
At issue was the claim term “a memory.” As mentioned, the Examiner found that “a memory” required there be a single memory, not two separate memories. The Board, however, disagreed, noting that established precedent holds that articles “a” and “an” are construed to mean “one or more” absent clear intent to limit to “one.” In the ‘132 patent, Patent Owner showed no clear intent to limit the scope of the claims to only one memory, and further explicitly stated that the invention is not limited to such an embodiment. Therefore, the Board disagreed with the Examiner in the reexamination and construed “a memory” to mean “one or more memories.”
Because on this construction by the Board, Patent Owner’s arguments against anticipation failed and the Board granted the petition for inter partes review.