In a 16-page non precedential opinion, the Federal Circuit held that the PTAB must construe claims of an expired patent using a Phillips-type claim construction, even if the subject patent had not expired at the time the AIA trial was instituted.   Black & Decker v. Positec USA, Inc., Nos. 2015-1646, -1647, slip op. at 9 (Fed. Cir. May 18, 2016).  In Black & Decker, the subject patent expired three months before the final decision was entered.  Id.

Most interesting, this holding potentially conflicts with one of the PTAB’s new rules, 37 CFR §42.300(b) (issued April 1, 2016).   That rule requires a patent owner to file a motion within 30 days of the filing of the petition requesting a district court-type claim construction if the subject patent will expire within 18 months from the entry of the Notice of Filing Date Accorded the Petition.  Given the PTAB is required to apply such a claim construction if the subject patent expires prior to the PTAB’s final decision, no such motion is required.  Of course, if the patent owner requests a district court-type construction under the new rule and the PTAB renders a final decision prior to the expiration of subject patent, then the PTAB will have failed to apply the broadest reasonable construction, contrary to its own precedent – a precedent with which the Federal Circuit has agreed.  See In re Cuozzo Speed Techs., 793 F.3d 1268, 1279 (Fed. Cir. 2015)(heard by the Supreme Court on April 25, 2016).  It will be interesting to see how the PTAB reconciles this case with its new rule.

With respect to the merits of the case, the court reversed the unpatentability of 2 claims under §103 and affirmed the patentability of 2 others under §103.  Its decisions were based primarily on the PTAB’s claim constructions – constructions contested by the petitioner.   The court determined that, even though the PTAB’s construction was made under the wrong BRI standard, its construction would have been the same under the proper Phillips-type standard.   Thus, the court did not remand for the PTAB for further analysis but rather reversed in part and affirmed in part.