In an inter partes review (IPR), a petitioner is required to identify how a challenged claim is to be construed. But that claim construction can be challenged by the Patent Trial and Appeal Board (PTAB) or by the Patent Owner. The Federal Circuit has recently provided guidance concerning what happens where the petitioner’s claim construction may be rejected.

The Federal Circuit held that where a patent owner in an IPR first proposes a claim construction in a patent owner response, a petitioner must be given the opportunity in its reply to argue and present evidence of anticipation or obviousness under the alternate claim construction, at least where it relies on the same embodiments for each invalidity ground as were relied on in the petition. The Federal Circuit indicated that the petitioner in this case did not seek to use new prior art references or point to different embodiments in the references used in the petition.

A simpler rule would deny the petition as improperly brought, placing the burden on the petitioner to present the proper claim construction in its petition. But the Federal Circuit felt that the requirement to affirmatively to state “[h]ow the challenged claim is to be construed” did not also direct a petitioner to raise, address, and apply alternative possible constructions. Thus, the Federal Circuit found guidance in its prior precedent evaluating the presented prior art against alternate claim constructions.