Claims that have terms lacking antecedent basis can present an opportunity for defendants in litigation, including creating a potential invalidity defense under 35 USC §112. It is interesting, therefore, to review the Board’s treatment of these issues in the context of an inter partes review, such as its decision to institute in \Google Inc. v. At Home Bondholders’ Liquidating Trust, IPR2015-00662, involving US Patent No. 6,014,698.
In the Decision to Institute Trial, the Board dealt with two antecedent basis issues. In the first instance, the Board considered a claim limitation that required “said banner location signal,” where the claim from which it depended only referred to a “location signal.” Because a person of ordinary skill in the art would read the claim in view of the specification, and the language was similar, the Board concluded that the person of skill would understand “said banner location signal” to refer to the “location signal” of the parent claim.
A later claim in the patent presented a tougher issue for the Board, however. In that case, the dependent claim required that “said banner includes an advertisement.” The parent claims, however, did not recite a “banner” at all. Petitioner suggested that perhaps the claim contained a drafting flaw, and should have depended from a different claim altogether. Alternatively, Petitioner assumed that the “banner” limitation corresponded to the “second portion of information” recited in the parent claim.
The Board declined to adopt either interpretation of the claim, deciding instead that the claim was indefinite and not susceptible to interpretation. Regarding the theory that the claim contained a drafting error, the Board found no basis on which to interpret it to depend from a different claim. Regarding the alternative theory, the Board was not persuaded that a person of skill would have understood the “banner” to refer to the “second portion of information.” In contrast to the above example involving “location signal,” here the terms were substantially different and the Board was unwilling to assume that they corresponded.
Because the Board was unable to determine the scope of the claim, it denied the Petition relative to that claim.