BRI and Phillips are No Different – Unified Patents Responds

By Scott A. McKeown
April 17, 2016

AnswerUnified Patents Inc. explained in its amicus brief in Cuozzo Speed v. Lee that “[t]he phrase ‘broadest reasonable interpretation’ describes the same procedure applied in both the PTO and by the courts.”  An inconvenient truth for Cuozzo — but a truth nonetheless.

Gene attacked Unified Patent’s position here last Sunday as “false on its face” and “unequivocally incorrect.” Those pejoratives miss the point of Unified’s brief. Unified did not argue that the courts and PTO both apply BRI in name; indeed, Cuozzo would lose his semantic gripe if that were the case. Rather, Unified argued that peeling away the BRI and Phillips labels reveals that both standards employ the same procedure. On this point, Unified’s position is hardly controversial, and Unified is hardly alone.

For instance, well-respected former Court of Appeals for the Federal Circuit (CAFC) Chief Judge Paul Michel (amicus in support of neither party) explained it this way (emphases added):

“[t]he putative claim construction standard between courts and the Patent Office is the same—with the one minor difference being that courts may apply disclaimers made by a patent owner during prosecution . . . while the Patent Office properly forces an applicant or Patent Owner to put the explicit text in the claims if it is not already there.”

In sum, apart from situations in which applicants/patentees are introducing disclaimers into an open PTO record (evidence that should always be disfavored over actual claim amendment), there is no doctrinal difference between BRI and Phillips.

Both the CAFC and the USPTO’s Patent Trial & Appeal Board (PTAB) consistently reinforce the coextensive nature of the frameworks.

In both venues, claims are construed consistent with the specification, as understood by a person of ordinary skill in the art, and the starting point for either forum’s construction is the plain and ordinary meaning of the claims (despite Cuozzo’s assertions to the contrary). See generally Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).

The BRI framework consists of the same features of claim interpretation based on Phillips. Compare Phillips, at 1312-1313 (“the words of a claim ‘are generally given their ordinary and customary meaning . . . the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention,’”) (internal citations omitted) with id. at 1316 “claims must be construed so as to be consistent with the specification, of which they are a part.”) (quoting Merck & Co. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003)).

In fact, the PTO emphasizes this same Philipps/BRI framework to every patent examiner and administrative patent judge it employs:

The broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach.

Manual of Patent Examination Procedure (MPEP) § 2111.

The CAFC has repeatedly emphasized the same commonality.

For example, in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir.2015), the court stated that claim constructions during IPR must not be “unreasonable under general claim construction principles” (emphasis in original). In addition, claims should always be read in light of the specification and teachings in the underlying patent, the PTO should consult the patent’s prosecution history, and the construction “must be consistent with the one that those skilled in the art would reach.” Id. In Trivascular, Inc. v. Samuels, No.2015-1631, slip op. at 6–7 (Fed.Cir. Feb.5, 2016), the court stated—invoking numerous citations from earlier decisions (omitted here)—that “[u]nder a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history.” In particular, “[w]hile 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. Id.

Rather than immerse themselves in authority that contradicts their fervent anti-PTAB beliefs, critics simply assume, that PTO claim interpretation that uses the word “broadest” must, therefore, be broader than the construction the courts apply. This simple reasoning might follow, until one realizes that each test was developed independent of the other, and one notes that the underlying frameworks are virtually indistinguishable. “Broadest” is not—and was never meant to imply—broadest relative to an alternative construction from the courts. Rather, “broadest” is contextual, relative to the patent specification, and as viewed by one of skill in the art—just like Phillips. Current and former patent examiners know this well. Both BRI and Phillips require a reasonable, technical construction in view of the intrinsic and extrinsic record. They simply serve different masters.

As demonstrated above, Unified Patents is not unique in its position that the BRI and Phillips frameworks are, properly applied, the same. Tellingly, aside from attacking the labels, neither Cuozzo nor any of his amici even attempt to identify any outcome-dependent difference in the frameworks. To his credit, Gene at least tries.

Contrary to the weight of authority, he points to a “critically important” difference between frameworks that was not identified by anyone else. That is, Phillips “specifically acknowledged and accepted the principle that a court construing patent claims should construe the claims, if possible, to preserve validity of the claims.” This is quite an exaggeration, even for this blog.

The Phillips court explained that the Federal Circuit has not “applied this principle broadly” [construing claims in favor of validity] and has “not endorsed a regime in which validity analysis is a regular component of claim construction.” Phillips, at 1327 (emphases added). The court thus went out of its way to denigrate construing claims just to save them. That is not to say that courts may not sometimes tend toward unduly narrow constructions proliferated by the parties. But to the extent that happens, it would be a shortcoming of the two-party litigation process, not BRI.

Unlike the district courts, the PTAB is not picking a winner in a contested proceeding between two parties. It is not a battle of two claim constructions—that is, if an accused infringer argues an overly narrow construction to avoid infringement, the patentee’s construction (likely nuanced to avoid invalidity and maintain infringement) does not win by default; instead, the technical truth—as determined by the originally issuing agency—rules the day. The PTAB seeks the true construction of the claims, often disagreeing with both parties and issuing what it believes is the true construction.

While the PTO and courts have occasionally differed in their claim constructions, those few differences are a reflection of, among other factors, the technical insight of the expert agency.   As technically and legally trained scientists and engineers, the PTAB analyzes each patent independently to assess the technical truth. Indeed, many PTAB judges have examined, prosecuted, and litigated patents themselves; many have been Federal Circuit clerks. That on occasion this insight results in a different outcome as compared to the “pick-a-winner” style of courts should not be surprising.

Here, Cuozzo wants to keep an earlier Phillips construction in which he was deemed the “winner.”

Changing the PTO’s claim interpretation practices would only allow those few patentees in possession of an earlier district court claim construction to head off the expert agency from doing its own thorough technical assessment. Such a result would undermine Congress’s goal of culling improvidently granted patents from the litigation landscape. Because claim construction is done using the same procedural guidelines in both the PTO and the courts under these standards, the phrase “broadest reasonable interpretation,” and the discussion it has sparked, is but a sideshow.

Unified Patents Inc. is a member organization dedicated to deterring non-practicing entities, or NPEs, from using extortive litigation tactics to extract settlements from operating companies based on patents that are likely invalid before the district courts and unpatentable before the PTO. Unified’s more than 115 members are Fortune 500 companies, small technology start-ups, automakers, industry groups, and others dedicated to reducing the unnecessary drain on the US economy of the now-routine baseless litigations asserting infringement of broad patents of dubious validity and patentability. Unified challenges patents, fights NPEs, and helps to reduce the costs companies incur fighting off their many dozens of annual NPE litigations.

The Author

Scott A. McKeown

Scott A. McKeown is a partner with Oblon, McClelland, Maier & Neustadt, L.L.P. He is a member of the firm's Management Committee, and co-chairs the Post-Grant Patent practice group focusing on post-grant counseling, litigation and related prosecution issues. He leads the Post-Grant Patent team responsible for electronics, wireless communications, software and computer-related inventions and business methods.

Mr. McKeown handles all aspects of post-issuance patent proceedings at the United States Patent and Trademark Office (USPTO). He specializes in administrative trials before the Patent Trial & Appeal Board (PTAB) as well as appeals to the Court of Appeals for the Federal Circuit (CAFC).

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 28 Comments comments.

  1. Anon April 17, 2016 7:47 am

    Sorry – not buying it.

    The plain fact of the matter is that the two are different. The differences are admitted and are very much part of the “procedure.”

    Period.

  2. Ken April 17, 2016 8:01 am

    That side shouldn’t be able to have it both ways. If the two standards are truly “the same,” or close enough that it supposedly shouldn’t matter, then simply agree that it should be made explicitly so.

    But to whatever extent you might concede a difference (which the PTO apparently did by pushing BRI…), then acknowledge the unfairness of not using the one designed for “adjudicatory” proceedings in *IPR* (which, by both letter and spirit of the AIA, was indeed designed to be an “adjudicatory” proceeding and not an “examination”).

  3. William Grecia April 17, 2016 10:56 am

    Unified Patents, I am not a patent troll and operate my patented claims at KodeKey.com – but yet you continue to try to defame and place me in a false light.. Am I the only independant inventor you filed IPRs against? What startup have I ever asserted against?

    You better pray the SCOTUS votes your way because just like that, your ability to file comical IPRs will disappear..

  4. William Grecia April 17, 2016 11:12 am

    Unified Patents filed 1/3 IPRs against me then wanted to discuss me giving them a $0 (0%) blanket license to multiple “industries” defined under their membership business model, in term for IPR relief..

    Understand, they attempted to get blank license for entities I’ve never had communications with..

    IPR reputation will never be that scary of a threat to me to allow anyone to use it to punk me.

  5. Steve April 17, 2016 11:42 am

    Scott — given you and your firm’s staunch, money-driven support of your patent-pirate infringer-lobby clients, your biased viewpoints — like Lemley’s and his other intellectually dishonest compatriots — should surprise no one.

    Gene knows of what he speaks.

    And given the conduct of “Unified Patents” and their “members,” accuracy demands that their organization’s name and mission statement actually read:

    Patent Pirates Inc. is a member organization dedicated to stealing the innovations of others, by whatever means possible. Pirate’s more than 115 members are efficient-infringing Fortune 500 companies, small technology start-ups, automakers, industry groups, and others dedicated to ignoring the Constitutionally-protected rights of others by refusing to license their duly-issued patents. From the Patent Office to the Courts to Congress, we will do whatever we can wherever we can in order to maximize our profits by taking for ourselves that which belongs to others.

  6. JNG April 17, 2016 12:21 pm

    “As demonstrated above, Unified Patents is not unique in its position that the BRI and Phillips frameworks are, properly applied, the same.”

    Really? Then this must be a different Scott McKeown than the guy who wrote this letter to the PTO, urging them to to use the “Philips” standard in IPRs when the claims could not be amended:

    http://www.uspto.gov/sites/default/files/documents/PTAB%20Rules%20Aug%202015%20Law%20Oblon%20Comments.pdf

    Unless the SM of that letter was not being entirely honest with the PTO about his belief that there is no difference in the standards and that they lead to the same result. And surely this MUST be a different SM than the fellow who wrote this in his failed petition v US Patent No. 6,738,155 in IPR2014-00788:

    “The USPTO requires BRI, as the patentee is given opportunity to amend their claims in this proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,764 (Aug. 14, 2012). As required by these rules, this Petition applies
    the BRI of claim terms, although BRI may be, and often is, different from a claim construction in district court. See, e.g., In re Trans Texas Holdings Corp., 498 F.3d 1290, 1297 (Fed. Cir. 2007)”

    I wouldn’t trust anything SM has to say since it seems to depend on the day of the week and who is paying the bills. Since Unified is well-funded by large infringers, its easy to find advocacy for purchase.

  7. Bemused April 17, 2016 4:11 pm

    JNG,

    NICE! Gotta love it when the Orwellian double speak is aired out for all to see.

    B

  8. Scott McKeown April 17, 2016 5:09 pm

    JNG,
    My PTO comment linked above related to the appropriate notice for applying expired patent constructions. Not surprisingly, it was the timing aspect of the switch to Phillips that was the subject of the PTO notice — and my response. I certainly need not “urge” the PTO to do what it has been doing for years now (applying Phillips at expiration). Even a cursory read of this letter makes that clear.

    Also, as pointed out in the article above. The courts often come to different constructions, but this is not driven by a difference in the tests themselves. Indeed aside from the ad hominem attacks, I see none of the comments have been able to offer one point of distinction. Odd given all the vim and vinegar. 🙂

    Thanks for the spirited responses.

  9. Stephan Curry April 17, 2016 6:17 pm

    what’s Marvin Spivak up to these days, anyway, Scott?
    Is Marv retired?
    thanks, man.

    you patent folks at Oblon are the best, IMHO, extremely high patent volume team like Stephen Curry.

  10. Night Writer April 17, 2016 8:49 pm

    @6 JNG!

  11. Night Writer April 17, 2016 8:57 pm

    What I have seen over my many years of prosecution experience (and some litigation with claim construction) is that BRI tends to isolate terms and Phillips uses the terms within context. So, if in a claim there is “computer network”, then any reasonable computer network is fair game for the examiner. Whereas in Phillips, the context of the other claim elements are used. For example, maybe only local area network would be OK in Phillips, but the any computer network might be OK in BRI. Plus, in BRI it seems to be tied to 103 more where the examiners often use something very abstracted from the actual term and then add a 103 argument to there. This seems to be the reverse of dist. ct. litigation where you start with the claims so you can’t put in 103 arguments into the Markman brief (yes, I’ve written them.)

    So, there is clearly a difference.

  12. Night Writer April 17, 2016 8:58 pm

    I’d bet just reading through a few briefs would hit on a case where a claim would be narrowed by Phillips and not BRI. I bet I could find it.

  13. Paul F. Morgan April 18, 2016 9:08 am

    Gene, its nice to see you again posting articles even from folks you disagree with, so that your readers get arguments from both sides.
    [My own view is that Cuozzo lacks standing to even be at the Sup. Ct. on this issue, because it had failed to show or even argue that the claim interpretation it seeks could reverse the outcome below.]
    P.S. Since Phillips is the only en banc decision of the Fed. Cir. on patent litigation claim construction disputes [there are numerous split or inconsistent Fed. Cir. panel decisions] it is interesting to note that the actual decision in Phillips was for a broader [not narrower] claim scope.

  14. Robert Greenspoon April 18, 2016 9:47 am

    Scott, you quote Judge Michel’s brief as follows:

    — For instance, well-respected former Court of Appeals for the Federal Circuit (CAFC) Chief Judge Paul Michel (amicus in support of neither party) explained it this way (emphases added):
    “[t]he putative claim construction standard between courts and the Patent Office is the same—with the one minor difference being that courts may apply disclaimers made by a patent owner during prosecution . . . while the Patent Office properly forces an applicant or Patent Owner to put the explicit text in the claims if it is not already there.” —

    But Judge Michel offered instead the nuanced view that, while there should be very little difference (in theory), the mischief of the rule is that it creates strikingly different constructions in practice:

    == With the exception of looking to disclaimers in the prosecution history under Phillips, but not under BRI, these standards are basically the same— meaning there should be little to care about in this appeal.

    But the Patent Office frequently does not apply this stated test for BRI—instead, using a “broadest interpretation,” “broadest examiner’s interpretation,” or an interpretation that does not look to the specification for guidance.

    * * *

    Below the water line lie rejections in hundreds of thousands of pending cases at the Patent Office. It is for those cases that, in addition to deciding whether and when BRI should apply (if at all), this Court should explain unambiguously what BRI is, or the divide between theory and practice will continue. ==

  15. Anon April 18, 2016 10:37 am

    Mr. Morgan,

    I don’t know if you have seen the rationale that would return standing.

    That rationale has to do with an attempt to amend that was denied.

    If the patentee can argue for a larger initial scope (somewhat of an aberration), then they have the power to amend to a different (and new) minor scope within the larger scope.

    I do not think the strict view you advance holds if the construction is viewed in this manner.

  16. Anon April 18, 2016 10:40 am

    Please release a post stuck on the filter

  17. Paul F. Morgan April 18, 2016 10:53 am

    R.G., the PTAB APJs in IPRs do not apply BRI to issued patent claims the same way in that respect as application examiners do. An application examiner could not properly apply prosecution disclaimers to narrow BRI claim scope even if they wanted to, because until application prosecution is fully ended the applicant can withdraw or disavow prior disclaimers or freely further amend claims to distinguish them, there or in a continuation application.
    N.B. In both IPRs and ex parte application appeals the Fed. Cir. has not hesitated to remand cases in which the “R” [for “reasonable”] in BRI was demonstrated to have been violated in their view by an unreasonable claim interpretation. Naturally there are far more unreasonable BRI claim interpretations by non-attorney ex parte application examiners than by a panel of APJ attorneys in contested cases, and far more that are not even challenged on appeal [for financial or other reasons].

  18. Paul F. Morgan April 18, 2016 11:23 am

    Anon, I do not see how the refusal of the PTAB to enter Cuozzo’s proposed claim amendment in its IPR helps its standing at the Sup. Ct.. That is not raised in either of the two cert questions, and the the Fed. Cir. has already held that proposed claim amendment was an illegal attempt to broaden rather than narrow the claim. [Broadening of an issued patent claim in any respect is barred by statutes in any post grant proceeding other than a reissue filed within two years of the patent’s issuance.]

  19. Patent Investor April 18, 2016 12:53 pm

    Scott says in the article, “Tellingly, aside from attacking the labels, neither Cuozzo nor any of his amici even attempt to identify any outcome-dependent difference in the frameworks.”

    And in the comment section, “Also, as pointed out in the article above. The courts often come to different constructions, but this is not driven by a difference in the tests themselves. Indeed aside from the ad hominem attacks, I see none of the comments have been able to offer one point of distinction.”

    Yet, Judge Moore in Broadband vs. Corning writes, with Judges O’Malley and Wallach concurring, “This case hinges on the claim construction standard applied—a scenario likely to arise with frequency. And in this case, the claim construction standard is outcome determinative.”

  20. Jamie April 18, 2016 5:29 pm

    LOL. As someone else said in another string. The Cuozzo dissent wrote that PPC dicta a few weeks ago. Gotta love it.

  21. Paul F. Morgan April 18, 2016 7:46 pm

    I’m glad you brought up the recent Fed. Cir. decision in Broadband vs. Corning, since it was decided after, and clearly inspired by, the Sup. Ct. arguments in Cuozzo. The actual Broadband vs. Corning decisions was that the IPR BRI decision was BRI unreasonable. They were admittedly bound by precedent to decide it on that basis. Their sua sponte speculative comment that if this had been an appeal from a D.C. claim interpretation the decision would have been easier [note, not different] is pure dicta.

  22. Anon April 18, 2016 8:00 pm

    Paul F Morgan @ 18,

    The point that the change was ruled broadening is the essence of why they would want to do as I indicated.

  23. Paul F. Morgan April 18, 2016 8:03 pm

    BTW, my interest here is merely in responding to erroneous arguments for differences between BRI [as applied in IPRs, not application examinations] and proper D.C. claim interpretation. There is one actual difference, and it is clearly spelled out in the en banc Phillips decision.

  24. Night Writer April 20, 2016 8:41 am

    So, Scott said there was no substance, but there certainly is and he hasn’t responded to it.

    @23 Paul: there is more than “one actual difference,” as anyone that has written Markman briefs and prosecuted patents knows.

  25. Paul F. Morgan April 20, 2016 9:57 am

    NR, all kinds of arguments get made in D.C. Markman hearings [and many D.C. Markman claim interpretations get reversed on appeal.] But I believe Scott’s point was that no one has pointed to other actual Fed. Cir. decisions [not just dicta] spelling out
    such a big difference in claim interpretation that would actually make a big difference in IPR final outcomes.
    Note that the Fed. Cir. continues to remand IPR PTAB decisions where the PTAB has not made a reasonable BRI.

    Anon, you yourself questioned Cuozzo’s standing when the cert petition was filed. There is simply no way that claim Broadening attempts, even if they were legal, could improve one’s odds of winning an IPR by better distinguishing the cited prior art.

  26. Anon April 20, 2016 8:09 pm

    Paul,

    You still seem oblivious to the point of the so-called “broadening.”

    It is NOT that they want a “broader” claim.

    They just want a different part of the “broader” claim – and they are saying there is NO broadening in part because you cannot broaden. If you cannot broaden, then they need the original meaning itself to be broader – even if that on its own is deleterious.

    You appear to not want to see the procedure that they are engaging in.

  27. Paul F. Morgan April 21, 2016 10:35 am

    Anon, surely you [and misguided amici] must see that is irrelevant to the standing issue. ANY way Cuozzo seeks to broaden their claim interpretation cannot possibly help reverse the IPR And Fed. Cir. 103 decision they are appealing from.

  28. Anon April 21, 2016 6:30 pm

    Paul,

    That is just not so – not if the proposed amendment within the “originally broader” claim is like the beachfront property rather than the swamp.

    I reject your view that I am somehow misguided – especially when you have done nothing to actually address the situation that I (re-)presented.

    Please take some time and be willing to think through the situation before you simply repeat yourself.