An interesting argument relative to the construction of claim terms in an inter partes review proceeding has been percolating in recent months.  Namely – what claim construction should be applied when a patent subject to review is expired, or expires during the proceeding?

In Toyota Motor Corp. v. Leroy G. HagenBuch, IPR2013-00483, the subject patent expired following the decision to institute inter partes review, causing the Board to confront the issue of whether to retain the previously-assigned broadest reasonable interpretation (“BRI”) of a claim term for the purposes of the final decision.

More specifically, the term “monitoring” had been defined according to its broadest reasonable interpretation as “watching, keeping track of, or checking.” However, during the period between the decision to institute inter partes review and the drafting of the final decision, the patent at issue (US Pat. No. 8,014,917) expired. As a result, the opposing parties agreed that the BRI should not be applied in the in the final decision. Instead, the claim term in question should be construed using a district court “Phillips” standard.

In the end, though, the Board came to the same conclusion – citing the specification and a conventional dictionary, the Board arrived at the same construction pursuant to Phillips as it did under the BRI, interpreting “monitoring” to mean “watching or keeping track of, or checking.”