From Worlds IPR response.
However, as the Board noted in its Institution Decision, for expired patents, the claim construction standard is not according to the broadest reasonable interpretation. Rather, the Board reviews the claims of an expired patent according
to a district court’s standard. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir.2012). In Phillips v. AWH Corp., the court set forth the principle that words of a claim “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention, construed to preserve validity in case of ambiguity. 415 F.3d 1303, 1312, 1327
(Fed. Cir. 2005) (en banc); see also Omron Oilfield & Marine, Inc. v. MD/TOTCO, a Division of Varco, L.P., IPR2014-00265, slip op. at 7 (PTAB Oct. 31, 2013)
(paper 11).
For applications filed on or after June 8, 1995, the expiration date of the
patent is 20 years from the filing date of the earliest related application. 35 U.S.C.
§ 154(a)(2). This filing date of the earliest related application does not go back to the provisional application, but rather to the earliest related non-provisional application. Id.; see also 35 U.S.C. § 154(a)(3).1 Each of the Worlds patents being challenged by Bungie in six related IPRs claims benefit to an earliest filed nonprovisional application No. 08/747,420, filed on Nov. 12, 1996. See, e.g., Ex. 1001
at 1; Ex. 2041 at 19; Ex. 2042 at 1; Ex. 2043 at 1; Ex. 2044 at 1.
Thus, the expiration date of each Worlds patents is 20 years from Nov. 12,1996, or Nov. 12, 2016, plus any patent term adjustment or extension. The patent term adjustment/extension set forth on the face of each patent at issue is as follows:
Further, a final written decision in this inter partes review must be issued no
more than twelve months from the date of institution, or Nov. 30, 2016. 37 C.F.R. 42.100(c).
Thus, the overwhelming likelihood is that this inter partes review will
be completed and a final written decision will issue after the ‘856 patent and ‘501 patent are expired, and concomitantly with the expiration of the ‘558 patent.
Further, the terms being construed in the ‘690 patent are substantially identical to the terms being construed in at least the ‘856 patent and the ‘558 patent.
The proper standard for claim construction in this inter partes review is the standard when the inter partes review is completed and when the final written decision issues. On this basis, the claim construction standard for at least the expired patents in these proceeding is according to Phillips v. AWH Corp., 415F.3d 1303 (Fed. Cir. 2005), not the broadest reasonable
