Patent Trial and Appeal Board (PTAB) Project Guidelines, v.2Instructions for Identifying and Extracting Patent Claim Terms and Their Associated Constructions

Connie Godsey-BellGlobal Content and Project Specialist

January 12, 2016

ContentsGoal of the Project................................................................................................................................................................................................................................. 2

How Terms and Constructions are Defined........................................................................................................................................................................................... 3

Web Site for Final Decisions of the Patent Trial and Appeal Board (PRPS) ...........................................................................................................................................4

How to Locate Information in PTAB Final Decisions..............................................................................................................................................................................5

Examples from Various PTAB Decisions.................................................................................................................................................................................................8

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Goal of the ProjectThe goal of the project is to identify and extract claim terms and constructions (definitions) in Patent Trial and Appeal Board (PTAB) final decisions.

Note the following points and guidelines:

The terms, constructions (definitions), and associated metadata will be stored in a central file. The data will be used to facilitate patent research, litigation, and analytics.

Only the terms construed by Administrative Patent Judges should be included. Terms construed by Patent Examiners or parties to the case should not be included.

The following terms, constructions (definitions) and case metadata should be extracted:

Data to be Extracted ExampleTerm substantially flatConstruction (definition) flat, with any aberration from flat being limited to a degree

that would not materially affect the relationship of the container top surface with the crests of the first and second seal rings, such that the first seal ring will contact the top surface and begin to deform before the second seal ring contacts the top surface

Case name Ex parte TERRY ZEIGLER, ERIC ELIAS, and CHRISTOPHE BARREAU

Case number Appeal No. 2013001487Last name of the Judge who authored the decision HornerApplication number 11/677,643Patent number 7,104,561Publication number 20070131408A1Paragraph In light of Appellant's Specification, we construe the term

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"substantially flat" to mean flat, with any aberration from flat being limited to a degree that would not materially affect the relationship of the container top surface with the crests of the first and second seal rings, such that the first seal ring will contact the top surface and begin to deform before the second seal ring contacts the top surface

Standalone term or part of a phrase Part of a phraseDescriptive meaning or ordinary Meaning DescriptiveRelated terms No examples exist at this time

How Terms and Constructions are DefinedAs noted above, the main goal of the project is to locate the terms and constructions (definitions) that appear in the PTAB final decisions. The points below are background information related to terms and constructions.

Disputes about patents are brought before the PTAB. The judges in the PTAB will make a ruling on the dispute. While deciding how to rule on the dispute, the PTAB judges must often (but not always) define a given word or phrase that is used in the claims of the

disputed patent. Words and phrases used in this context are called “claim terms” or simply “terms.” The process of defining them is called “construction.” This word is

derived from the legal word “construe,” which means to interpret. Therefore, a patent term construction is a legal interpretation of that term. Some terms consist of only one word, but some terms are phrases. Constructions can consist of only a few words or a sentence. Sometimes a

construction consists of a long, complex paragraph. For example, a term such as “enforcing” might be constructed by the PTAB to mean “a meta-right means having a repository, based on information within the meta-right and, optionally, specified in one or more state variables or conditions, perform actions to create, manipulate, modify or revoke a derived meta-right or a usage right.” It is not unusual to encounter a complex paragraph as a construction of a patent term.

Terms and constructions are often surrounded by double quotes. The double quotes should not be included as part of the term or construction. Not all final decisions will contain terms and constructions. Some will contain a discussion of term construction, but will not include actual terms and

constructions. If no actual terms are constructed, the word “None” should be entered in place of a term. The Construction field should be blank.

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Structure of a Final Decision of the Patent Trial and Appeal Board The Patent Trial and Appeal Board (PTAB) final decisions are originally published in PDF format on the United States Patent and Trademark Office web site called the Patent Review Processing System. The decisions are downloaded and formatted for Lexis on a weekly basis.

How to Locate Information in PTAB Final Decisions1) The example below shows a Lexis version of a PTAB final decision. Information extracted from the PDF is indicated in the

comments:

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2) Terms and constructions may be found throughout the decision. The language in which they appear varies. The words “we construe,” “we interpret,” or similar language beginning with “we” is a signal that the judges construed a term. This project does not include terms interpreted, defined, or construed by patent examiners or parties to the case. It only includes terms construed by judges.

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3) A reference to a dictionary definition may appear following the term and construction.

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Examples from Various PTAB DecisionsExample 1

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Example 2. Terms and Constructions are sometimes found embedded in a discussion of a party’s construction. The judges may agree with the party’s construction. The words “We agree with appellant” can be signal words.

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Example 3. Terms and Constructions are sometimes found in a list under “Findings of Fact.” When they appear in that location, they are judges’

constructions.

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Example 4: A discussion of a term may appear in the middle of the text and may refer to earlier text.

Example 5: In this example, the same dictionary reference is used twice. The reference “Id.” Indicates that the same dictionary reference is used for the term “frustrum” as was used for the term “plug.” The full dictionary reference should be repeated. Do not use the reference “Id.”

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