Federal Circuit reverses Board on erroneous application of the broadest reasonable interpretation

By Gene Quinn
September 26, 2017

“The correct inquiry,” Judge Lourie wrote, “is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.”

unreasonableEarlier today the United States Court of Appeals for the Federal Circuit issued a decision in In re Smith International, Inc. As described by Judge Alan Lourie, writing for the unanimous panel (consisting of Judges Reyna and Hughes), “[t]his case primarily concerns what the word ‘body’ means in the context of the ‘817 patent.” More specifically, however, the legal point at issue making this case a precedential decision was how far the Patent Office may go when applying the broadest reasonable interpretation. The Federal Circuit decided that in apply the broadest reasonable interpretation the examiner and Patent Trial and Appeal Board (PTAB) arrived at an unreasonable interpretation not supported by the specification.

The patent in question was U.S. Patent No. 6,732,817, which was the subject of an ex parte reexamination proceeding at the United States Patent and Trademark Office (USPTO).

Without getting unnecessarily factually specific, in order to understand the importance of this decision suffice it to say that the examiner rejected certain claims in reexamination as being anticipated by prior art reference Eddison, and other claims as also being obvious in light of Eddison. The examiner interpreted the critical term “body” as being very broad and possible of encompassing other components such as a “mandrel” and a “cam sleeve,” which were taught by Eddison. The Board affirmed this interpretation by the examiner because the specification did not prohibit the examiner’s broad reading of the term “body.”

The Federal Circuit concluded that the Board’s construction of the term “body” was unreasonably broad even given proper usage of the broadest reasonable interpretation claim standard. Judge Lourie explained the familiar refrain that broadest reasonable interpretation does not mean an interpretation so broad that it would encompass an unreasonable construction under claim construction principles (citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)), nor does broadest reasonable interpretation allow for a legally incorrect interpretation that is divorced from the specification and record evidence (citing PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751– 53 (Fed. Cir. 2016)).

The Federal Circuit explained that ‘817 patent does not use the term “body” in a generic manner, which precludes an interpretation. In fact, the ‘817 patent specifically discusses the term “body” consistently as being distinct from other components such as a mandrel, piston, and drive ring. Thus, the Board’s interpretation was erroneous, Judge Lourie explained.

The Federal Circuit went on to explain the proper inquiry in light of the broadest reasonable interpretation standard:

The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and internal quotation marks omitted); see also In re Suitco Surface, 603 F.3d 1255, 1259–60 (Fed. Cir. 2010).

This ruling obviously makes perfect sense. Absent a comprehensive glossary that defines each and every term appearing in a patent application it would be impossible for any applicant to ever proscribe and/or preclude any and all possible broad readings for various terms that a patent examiner may come up with after the fact. Defining every term has never been required and anticipating frivolous examiner arguments has never been required, and is in fact considered inappropriate.

The USPTO seems to have an increasingly unhealthy love affair with the broadest reasonable interpretation standard. They seem to believe it gives them the authority to do things that are clearly unreasonable and not supported by well-established patent law principles, and apparently it gives them the authority to ignore Supreme Court precedent. I don’t have any illusions that one case will change this concerning trend.

In this case, the Federal Circuit ultimately concluded that the claims in question were not unpatentable in light of a proper claim construction, and therefore reversed the Board.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 8 Comments comments. Join the discussion.

  1. Dan Hanson September 26, 2017 3:35 pm

    For another example of creative application of broadest reasonable interpretation by the Board, see In re LF Centennial Ltd., No. 2015-1931, slip op. at 9-10 (Fed. Cir. June 29, 2016) (nonprecedential). The Director argued that two elements share attributes in common, so they may be interpreted as being interchangeable or equivalent. “That suggestion is fallacious,” said Judge Taranto for the Court, explaining that “it employs a version of the fallacy of the undistributed middle, under which the two statements, ‘a dog is a four-legged pet’ and ‘a cat is a four-legged pet,’ are asserted to give rise to the inference that a dog is a cat.” The case is nonprecedential, but if anyone wants to use the dog-and-cat thing in an argument, the case might be cited for the limited purpose of giving credit where credit is due.

  2. Gene Quinn September 26, 2017 3:50 pm

    Thanks Dan. I will look that one up. Great reference!

  3. Name withheld to protect the innocent September 26, 2017 4:29 pm

    The Director argued that two elements share attributes in common, so they may be interpreted as being interchangeable or equivalent
    I am not surprised that this argument was made — not because it is a good argument — but because the USPTO has a penchant for arguing anything to justify an unreasonable broad interpretation.

    The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.
    Examiners and the Board do this all the time — a classic example is their interpretation of “storage medium” and the application of ex parte Mewherter. I cannot say how many times I’ve seen an Examiner or the Board write something to the effect of “the specification does not explicitly disclaim transitory, propagating embodiments — therefore, we construe your language to include transitory, propagating embodiments.”

  4. Gene Quinn September 26, 2017 4:48 pm

    Name withheld-

    On a tangent… the whole issue about transitory signals has always bothered me enormously. As if transitory signals don’t exist. One of the worst decisions from a technology standpoint the CAFC has made. Laughable really. And in the hand of patent examiners that is what you get.

    -Gene

  5. Name withheld to protect the innocent September 26, 2017 9:24 pm

    One of the worst decisions from a technology standpoint the CAFC has made.
    On so many levels. First, the Board’s analysis was an (undesignated) new grounds of analysis — all the evidence cited by the Board was not cited by the Examiner. As such, it was never contested on the record. Also, without going on for hundreds of words, there are plenty of holes to be poked in that evidence Second, there is a fundamental difference between a storage medium, a transmission medium, and a signal per se. Signals propagate over transitory mediums — they are not mediums. Storage mediums have NEVER been considered by those skilled in the art to encompass transitory, propagating signals per se. The “evidence” cited by the Board was poorly-written attorney boilerplate language — not indicative of how those skilled in the art would interpret the term “storage medium” or “storage.” You could review tens of thousands of technical papers that mention the term “storage medium” and not a single one of them would describe a “storage medium” as a transitory, signal per se.

    In the end, the USPTO/Board wanted to promulgate a certain policy position: storage mediums are not statutory subject matter. Rather than solicit public comment on the policy position, they decided to go the backdoor route by issuing this decision. This decision wasn’t first labeled precedential but labeled precedential only after the applicant chose not to appeal it or request for rehearing. It was altogether unsurprising that Allen MacDonald’s name is one of the signatories — his name can be found on quite a few questionable Board decisions. His is no longer the Vice Chief Administrative Patent Judge, but it is apparent that he is still has high connections and he is apparently doing the bidding of the anti-software patent wing of the USPTO.

  6. Night Writer September 27, 2017 8:08 am

    @5 thanks for sharing that. Shameful. I’ll keep my eye out for Allen MacDonald.

  7. step back September 27, 2017 1:17 pm

    {begin semi-sarcasm}

    See. You patent attorneys don’t know no real science. The universe is the storage housing for all transitory propagating signals. Or as the PTAB more aptly noted:

    “As a notorious example, our radio telescopes read waves emitted by stars
    thousands of years ago — the content of those waves were stored for that
    duration.”
    Ex parte IBRAHIM (PTAB 8/17/2017) Appeal 2015-006472, Application 13/481,082, Technology Center 3600

    In other words, not only are propagating signals ephemeral, fleeting and almost not there at all as real energy, but they are stored for thousands of years by the universe and then “read” by our radio telescopes. When are you people going to understand anything about real science?

    {end sarcasm}

  8. Anon September 27, 2017 4:25 pm

    Step back,

    mere thousands of years?

    😉

    “but are now up to around 45.7 billion light years away”
    See: https://en.wikipedia.org/wiki/Observable_universe

    (from elsewhere to us)

    or from us to others:
    See: http://www.popularmechanics.com/space/news/a27934/galaxy-map-human-radio-broadcasts/

    (in other words, ANY “transient” wave created by man (and sent into space) is STILL (transitorially; if I may coin that term) “stored”

    What some consider transitory, have lasted far longer than many things considered NON-transitory.

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