On July 8, in In re Cuozzo, the CAFC denied en banc review of a prior panel decision that confirms the PTAB can use a different standard for interpreting claims than a district court.
One reason for allowing different standards related to the possibility of amending patent claims before the PTAB, something that is not possible in a district court. However, it may be time to take a slightly different look at whether the PTAB and district courts must use the same interpretation.
The Denial of En Banc Review:
The majority, in a 6 to 5 split decision, suggested that the PTAB and a district court could use different standards in determining the meaning of a legal document – a patent. The majority and the dissent discussed the ease in which patent applicants can amend claims before a patent issues and the ability to amend claims at the PTAB after a patent issues. This line of reasoning is set forth to justify why the “Broadest Reasonable Interpretation” is the proper test for interpreting claims before a patent issues. However, the ability to amend claims in a post-grant proceeding, such as an inter partes review, should be irrelevant to the interpretation of terms used in the original patent claims.
A patent is often compared to a contract. A contract is the written, physical embodiment of an agreement or bargain and its purpose is to accurately and unambiguously represent the parties’ positions. Once a contract is signed, the meaning of the contract is fixed, and the meaning of the contract should not be different depending on who is reading it. Likewise, once a patent issues, the meaning of the patent should be set in stone and later developments should not affect the understanding of claim terms. In addition, and importantly, issued claim terms should not be interpreted one way by a court and another way by the PTAB. It is already difficult for the PTAB and courts to properly interpret claims. The problem is compounded by the fact that the CAFC is now endorsing different interpretations of an already issued patent based on who is interpreting the patent. The result of this difference in standards is judicial sanctioning of discrepancies in claim interpretation of already issued patents and encouragement of forum shopping based on such discrepancies.
In contrast to un-amended claims in an already issued patent, if a patent claim is actually amended in a post-grant proceeding, perhaps any new features in the amended claims or new claims should be given the BRI while the patent is involved in any post-grant proceeding. However, once that post-grant proceeding is finished, those new claims and new terms should be interpreted the same way in any subsequent proceeding, whether it be another subsequent PTAB proceeding or a district court litigation.
Conclusions and Suggestions:
For the time being, the PTAB, in reviewing patent claims, must use the Broadest Reasonable Interpretation. See also Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015); Achates Reference Publ., Inc. v. Apple Inc., 2015 U.S. App. LEXIS 17183 (Fed. Cir. Sept. 30, 2015). However, the PTAB may want to consider indicating in its decisions, when appropriate, that its claim construction is not only the Broadest Reasonable Interpretation, but also the only reasonable interpretation based on the intrinsic record and/or extrinsic evidence. Parties might find it prudent to make alternative arguments regarding the standard for claim interpretation until this issue is finally resolved.
The patent owner in In re Cuozzo filed a Petition for a Writ of Certiorari to the Supreme Court on October 6, 2015. The response was due on November 9, 2015. If the Supreme Court takes up the issue, it could decide contrary to the current Federal Circuit precedent. It is also possible that Congress could change the standard for claim construction that applies to post-grant proceedings through legislation.
Alternatively, the PTO could change its own rules regarding the claim construction standard for post-grant proceedings. For example, the Intellectual Property Owners Association (IPO) has submitted comments in response to the PTO Request for Comments on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board published in the Federal Register on August 20, 2015. (last visited Oct. 23, 2015); see also 80 Fed. Reg. 161, 50720 (Notice). In these comments, the IPO argues the same “legally correct” claim interpretation standard should be used in district court litigation and post grant proceedings. Id. at pp. 2-3 (citing Microsoft v. Proxyconn and Phillips). The PTO previously asked for comments in a June 27, 2014 Notice regarding the claim construction standard that should be applied in post-grant proceedings, but the comments favoring retention of the BRI approach were adopted in the August 20, 2015 response. 80 Fed. Reg. 161, 50721-22. However, several specific comments regarding limitations on certain applications of BRI were also adopted. Id. If enough commenters raised issues regarding the current rules regarding claim construction, the PTO could change its rules, although this possibility seems unlikely given the In re Cuozzo decision.
It would be best for practitioners and decision makers if the same standard is used in interpreting issued claims regardless of forum (PTAB or district court). Once a patent issues, the meaning of the claim should be set in stone. Just like a final, signed contract, a patent claim means what it means and it should not mean something different depending on who is reading it.