In an IPR proceeding, the parties may provide
less detailed claim construction arguments than in a
district court. The petitioner challenging the patent
claims at least must identify how the challenged
claim is to be construed.”
The petitioner may decide
to satisfy this requirement by “merely provid[ing] a
statement that the claim terms are presumed to take
on their ordinary and customary meaning,” as well
as “point[ing] out any claim term that has a special
meaning and the definition in the specification.”
However, the petitioner often provides some analysis
of claim construction, especially where it can expect
the patentee to argue for narrower claim constructions.
The patentee is not required to propose any claim constructions
in an IPR proceeding, but often argues for
narrow constructions in view of the identified prior
art. The PTAB may or may not rely on the parties for
claim constructions.
When the same patent claims are at issue in both a
district court and an IPR, predicting how each forum’s
claim constructions might affect the other’s is a key
strategic question. Each forum applies a different claim
construction standard and uses a different claim construction
procedure. This could lead to different constructions
of the same claim in a district court litigation
and an IPR. Despite these differences and potential
conflicts—or because of them—each forum is likely to
consider the constructions of the other.
