As we wait for the Supreme Court decision in Cuozzo Speed Technologies, LLC v. Lee, where the Court has been asked to decide whether the USPTO Patent Trial and Appeal Board (PTAB) should apply the “broadest reasonable interpretation” (BRI) of claims during Inter Partes Review proceedings, the Federal Circuit has been providing guidance on how to apply the BRI standard. The court’s emphasis on the “reasonable” requirement of that standard is welcomed by practitioners who often find USPTO claim constructions to be unreasonably broad.
In Cuozzo, the Federal Circuit upheld the PTAB rule adopting the BRI for IPR proceedings, 37 CFR § 42.100(b):
A claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.
The court explained this standard most recently in SAS Institute, Inc. v. Complementsoft, LLC, where it gave this guidance:
SAS argues that because the Board’s construction is narrow, it cannot be the broadest reasonable interpretation of the claim term. This is not so. While we have endorsed the Board’s use of the broadest reasonable interpretation standard in IPR proceedings, we also take care to not read “reasonable” out of the standard. This is to say that “[e]ven under the broadest reasonable interpretation, the Board’s construction cannot be divorced from the specification and the record evidence, and must be consistent with the one that those skilled in the art would reach.” [Microsoft Corp. v.] Proxyconn, [Inc.], 789 F.3d [1292,] 1297 [(Fed. Cir. 2015)] ….
While the court was upholding the PTAB’s construction in that case, it encountered an unreasonable BRI in PPC Broadband, Inc. v. Corning Optical Communications RF, LLC:
The Board seems to have arrived at its construction by referencing the dictionaries cited by the parties and simply selecting the broadest definition therein. And it does appear that among the many definitions contained in the dictionaries of record “in the immediate vicinity of; near” is the broadest. While such an approach may result in the broadest definition, it does not necessarily result in the broadest reasonable definition in light of the specification. The Board’s approach in this case fails to account for how the claims themselves and the specification inform the ordinarily skilled artisan as to precisely which ordinary definition the patentee was using.
On the other hand, it was the Petitioner who was seeking an unreasonably broad claim construction in TriVascular, Inc. v. Samuels, and had to be reminded of these standards:
While the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); see In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1148-50 (Fed. Cir. 2012) (finding the Patent Office’s construction unreasonably broad because it was “unreasonable and inconsistent with the language of the claims and the specification”). Construing individual words of a claim without considering the context in which those words appear is simply not “reasonable.” Instead, it is the “use of the words in the context of the written description and customarily by those of skill in the relevant art that accurately reflects both the ‘ordinary’ and ‘customary’ meaning of the terms in the claims.” Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003).
Taken together, this guidance indicates that the BRI may be the broadest interpretation that is consistent both with how a term is used (and defined) in the specification and how it would be understood by a person of ordinary skill in the art.
While this guidance was given in the context of IPR proceedings, the Federal Circuit noted in Cuozzo “the long history of the PTO’s giving claims their broadest reasonable construction” in all types of proceedings, “including initial examinations.” Thus, this guidance should apply to a USPTO examiner’s claim construction. However, when an applicant disagrees with an examiner’s BRI, it often is more expedient to amend the claims–if an appropriate amendment can be made. Otherwise, the applicant’s only choice may be to pursue an expensive and lengthy appeal, and hope the PTAB agrees that the examiner’s claim construction was unreasonably broad, and that that error warrants reversal of the appealed rejection(s).