Given the difficulty Patent Owners are having in surviving IPR proceedings, the discussion often turns to ways in which patents can be drafted to help survive an IPR Petition. In this regard, the recent decision in Aker Biomarine AS et al. v. Neptune Tech. et al., (IPR2014-00003), teaches that, in the right circumstances, a patent applicant may find it beneficial to include explicit definitions of claim limitations in its patent specification. In Aker Biomarine, at issue was Patent Owner’s use of the term “about” from the claims of the subject patent in conjunction with a value from the claims. Because the Patent Owner had defined the meaning of “about” in the specification, several of its claims survived the IPR proceeding.
More specifically, the patent explicitly defined the term “about” in the specification, as follows:
“As used herein and in the claims, where the term “about” is used with a numerical value, the numerical value may vary by at least ±50%. Preferably, the variation will be ±40% or ±30% and more preferably ±20% or ±10%. Even more preferred variations are in the range ±5%, ±4%, ±3% or ±2%. Most preferably, the variation is in the range of ±1%.” (emphasis added) Decision at 10.
Petitioner contended that “about” should be construed to modify an absolute value by an amount of “at least ±50%,” as set forth in the above-referenced definition. For example, if a claim contained the limitation, “about 5%,” in light of the definition contained in the specification, that allowed for a 50% variance, this limitation should be construed to mean a range of -45% to 55% – that is, subtracting 50% from 5% to find the lower end of the range and then adding 50% to 5% to find the upper end of the range.
Patent Owner argued that Petitioner’s proposed construction would be nonsensical to the ordinary artisan given the possibility of producing negative percentages, as in the example above. Instead, Patent Owner contended that the ordinary artisan would interpret phrases like “±50%” as seen in the definition to be determined from the numerical value used with the variation. For example, 5% ±50% indicates a range of 2.5% to 7.5% (50% of 5% = a variation of 2.5% in each direction). Id. at 11.
The Board agreed with Patent Owner regarding what value to which the 50% variance should be applied. For example, relative to claim 5 of the subject patent, that required a concentration of free fatty acids of about 5% w/w of the lipids in subject extract, the Board construed “about 5%” to mean a range of 2.5% to 7.5%. Because the prior art failed to disclose free fatty acids in this range, claim 5 was not shown to be unpatentable.