On June 11, 2014, the Patent Trial and Appeal Board (PTAB) denied Apple Inc.’s petition requesting inter partes review (IPR2014-00234).  The petition requested review of claims 1-7 and 29-34 of U.S. Patent No. 8,457,340 (“the ‘340 Patent”).  The ‘340 Patent is owned by THX Ltd., LLC and is the subject of litigation in THX Ltd. v. Apple Inc., Civil Action No. 3:13-cv-01161 (N.D. Cal.).

Importantly, while Apple challenged independent claims 1, 7, and 29 of the ‘340 Patent, Apple’s petition proposed constructions only for dependent claim terms.  However, the PTAB ultimately chose to construe only independent claim terms, noting that no express construction of the dependent claim terms was necessary for purposes of its decision.  In other words, when denying Apple’s petition, the PTAB chose to construe claim terms for which Apple did not propose constructions.

There is no doubt that Apple’s strategy of proposing constructions only for dependent claim terms could have been influenced by a host of factors.  For example, Apple may have questioned whether proposing constructions for independent claim terms would have negatively impacted the litigation.  Nevertheless, by opting not to propose constructions for those claim terms that the patent owner was likely to distinguish over the prior art, it seems that Apple may have missed an opportunity to persuade the PTAB on the issues that ultimately proved to be dispositive in denying Apple’s petition.

Notably, in choosing to construe one of the independent claim terms, the PTAB stated the following on pages 5 and 6 of its decision:

“Each of independent claims 1, 7, and 29 recites ‘straight path.’  Neither party provides a proposed construction for ‘straight path.’  Patent Owner, however, asserts that Sadaie does not disclose or suggest a sound duct that provides a straight path from the drive unit to the output slot.  For the purpose of evaluating Patent Owner’s arguments, we construe the term ‘straight path.’” (emphasis added) (internal citations omitted).

It appears from this statement that, simply by virtue of a patent owner arguing an alleged point of distinction between a prior art reference and an independent claim term, the PTAB may be inclined to construe the claim term in order to “evaluate” the patent owner’s arguments.

As a takeaway, to the extent that a petitioner can predict which claim terms are ripe for distinguishment by the patent owner, the petitioner may consider providing proposed constructions and associated argument for such claim terms.  This could help ensure that the petitioner has a voice to be heard in the event that the patent owner’s attempt to distinguish over the prior art provokes the PTAB to construe one such term.  Otherwise, like Apple, the petitioner may be left on the sidelines, with little to say for it.