Broad Claims Bite Back: Drafting Narrower Scope in the Age of IPR
by Dennis Crouch
The Federal Circuit recently affirmed a PTAB IPR decision invalidating claims of Masimo U.S. Patent RE47,218 (“the ’218 patent”) as obvious under 35 U.S.C. § 103. Masimo Corp. v. Sotera Wireless, Inc., 2022-1415 (Fed. Cir. Sept. 28, 2023) (nonprecedential). The Federal Circuit panel of Judges Prost, Wallach, and Chen determined (1) the Board correctly construed the disputed claim terms and (2) its obviousness ruling was supported by substantial evidence. Id. (authored by Judge Wallach).
The case is yet another example of a patentee’s broad claim language and attempts to avoid limitations coming back to bite during IPR proceedings. Unlike a decade ago, patent prosecutors are operating in today’s AIA world where IPR challenges have become commonplace. The old model of broad-as-possible clearly has deficiencies. To withstand post-issuance validity challenges, prosecutors should carefully craft claims early on with an eye toward narrower scope and avoiding abstraction even if you are doing enough to satisfy the USPTO on 112 and 101. Prosecutors can take full advantage of the 20 ‘free’ claims to pursue both broad and narrow protection. In the case here, the patent owner may have benefited from prosecuting more specific claims early on, as the disclosure arguably supported narrower alternatives that an IPR petitioner would have struggled to knock out.
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