Context: From the implementation of the America Invents Act (AIA) in the early 2010s until October 2018, different claim construction standards were used between
- inter partes reviews (IPRs) by the Patent Trial & Appeal Board (PTAB) of the United States Patent & Trademark Office (USPTO), where the broadest reasonable interpretation (BRI) was used, and
- (in)validity decisions in infringement proceedings in district court, where the Phillips v. AWH reasonableness standard already applied.
The standard was harmonized when the USPTO adopted Phillips in 2018. At the time, some stakeholders downplayed the effect it would have in practice.
Any appeals of PTAB decisions under the BRI standard have been resolved for a while. But there can be cases where one or more patent claims were invalidated under BRI while others survived. One such case is U.S. Patent No. 8,454,186 (“Modular lighted tree with trunk electical connectors”; this is about artificial Christmas tres with lighting). In 2022, the United States Court of Appeals for the Federal Circuit overruled the PTAB to invalidate 11 of its claims (PDF). But an infringement case in the United States District Court for the District of Minnesota was taken to trial and resulted in a $40M+ damages award based on a surviving claim.
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Court and counsel
Panel (unanimous): Chief Judge Kimberly A. Moore, Circuit Judge Leonard P. Stark, and District Judge J. Paul Oetken (Southern District of New York; by designation).
Counsel for plaintiff-appellee Willis: WilmerHale’s Mark C. Fleming and Nora N. Xu; and Robins Kaplan’s Patrick M. Arenz, Brenda L. Joly, and Emily Elizabeth Niles.
Counsel for defendant-appellant Polygroup: Finnegan’s J. Michael Jakes, Ryan V. McDonnell, and Jason L. Romrell; and Merchant & Gould’s Rachel Zimmerman Scobie.