Cuozzo and Broadest Reasonable Interpretation – Should the Ability to Amend Be Relevant?

scales-lady-justice-335On 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.

[JV-2]

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.

The Author

Gerald M. Murphy Jr.

Gerald M. Murphy Jr. is a Partner with Birch Stewart Kolasch Birch LLP. He has practiced in the intellectual property field for over 35 years, and has prosecuted numerous patent applications in the areas of biotechnology, biopharmaceuticals, therapeutic antibodies, organic chemistry, biochemistry and pharmaceuticals. Mr. Murphy has also prosecuted a variety of Post-Grant Review applications and handled numerous appeals within the U.S. Patent and Trademark Office. He has conducted a multitude of Oral Hearings before the U.S. Board of Patent Appeals and Interferences and the Patent Trial and Appeal Board and has represented clients in a variety of post grant matters, including inter partes reviews, interferences and reexaminations. He has personally participated in over 30 patent interferences.

Mr. Murphy has counseled clients and prepared numerous opinions analyzing patent validity and infringement issues, managed worldwide patent portfolios and lectured before international audiences on U.S. patent law and case law developments. Mr. Murphy served as the sole arbitrator in two arbitrations involving patent and licensing issues in the fields of DNA diagnostics and therapeutic monoclonal antibodies and has served as an expert witness in patent infringement litigations and an arbitration involving a patent license agreement.

Mr. Murphy chairs BSKB's annual Patent Prosecution Seminar and Post Grant Bootcamp.

Gerald M. Murphy Jr.

Lynde F. Herzbach is an Associate with Birch Stewart Kolasch Birch LLP. She focuses her practice on intellectual property and technology, specifically in litigation, inter partes review proceedings, and patent prosecution. She has experience in all aspects of litigation, including discovery, motion practice, pre-trial and trial, and appeals to the Federal Circuit. Ms. Herzbach was part of a team that successfully represented a pharmaceutical company in a challenge to several patents through inter partes review. She also has experience with patent prosecution in the electrical engineering field. During her legal career, Ms. Herzbach has represented clients in the fields of software, electronics, medical devices, pharmaceuticals, and manufacturing processes.

Ms. Herzbach earned her J.D. from the University of Michigan Law School in 2006 and her B.S.E., cum laude, from the University of Michigan College of Engineering in 2002. While in law school, she was an Associate Editor of the Michigan Telecommunications and Technology Law Review. She also served as the Project Coordinator for the Family Law Project. Prior to joining BSKB, Ms. Herzbach previously worked for a New York law firm and an international law firm’s Silicon Valley office.

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 12 Comments comments.

  1. Joachim Martillo December 7, 2015 8:45 am

    I have found that Examiners and APJs often apply BRI incorrectly and then get slapped by the CAFC.

    Cioffi v. Google is an example.

    The MPEPs are clear in the subject.

    For BRI:

    Don’t import limitations from the written description or other claims!

    1) Use clear definitions that come from the written description and that override any applicable terminology of the art and ordinary English usage when there is no applicable terminology of the art!

    2) If there is no such clear definition, apply the terminology of the art if there is any such terminology.

    3) If there is no applicable terminology of the art, only then apply ordinary English usage!

  2. Kansas City, Nebraska December 7, 2015 10:31 am

    Saying that claims are subject to BRI because they can be amended and then denying the right to amend is bait and switch, at best. No wonder IPRs at Ptab are called the killing fields.

  3. Joachim Martillo December 7, 2015 12:01 pm

    It might be possible to file a request for reissue when an IPR is instituted and cite the institution of the IPR as a reason.

  4. Kansas City, Nebraska December 7, 2015 1:43 pm

    Joachim, how is requesting reissue going to protect you from the PTAB killing fields?

  5. Night Writer December 7, 2015 1:56 pm

    Kansas City, the reissue may allow you to amend the claims and then get a new patent from the IPR’ed patent.

    It is possible. I guess better than a sharp stick to the eye.

  6. Anon December 7, 2015 4:07 pm

    Reissue – strict two year limit on broadening claims (and let’s not forget, that certain eliminations create broader claims, and that broader can also encompass merely a “moved” scope, for example… pre: Bb—Ff and post: CcNew—Gg, a scope “moved” one “element” with an additional detail on an old “element” may be deemed a broadened claim.

  7. Edward Heller December 7, 2015 6:48 pm

    There is no excuse to hold invalid a claim in an issued patent based upon a construction that is the broadest, reasonable construction. This kind of the construction is useful during ex parte prosecution in order to force clarifications into the claims. But, with an issued patent, holding a claim invalid based upon a choice of constructions and choosing the one that reads down the prior art as opposed to the one that does not is effectively denying the patent owner due process.

    It has nothing to do with the right to amend. The damage is done by the cancellation of the claim. (Amended claims after all only have perspective effect in all the damages that may have accumulated up until the time the amended claims have issued our gone.)

    Due process!

    That is the argument that should be made.

  8. Edward Heller December 7, 2015 6:49 pm

    Should read, “reads on the prior art.”

  9. Inventor0875 December 7, 2015 9:42 pm

    IPR and Autos (an analogy):

    An auto (patent) is suspected of being defective.

    The organization (USPTO) responsible for quality of the auto (patent) investigates (IPR) and finds a defective part (bad claims).

    Strangely, the value of the rest of the auto (specification/disclosure quid pro quo) is not considered.
    Hence, all autos with a defective part are sent to the auto compactor/shredder (invalidated).
    No recompense occurs when your auto is shredded.

    The organization does not identify the correct configuration of a replacement part (amended claims).
    Production (USPTO examination team) is only told the part is bad, but not the fix to adjust on-going production.

    Those who really need an auto (patent) now order “n” different variations (continuations) hoping for one that doesn’t get shredded because of a defective part (claims).
    Production becomes swamped with orders for variations.

    Practitioners are sued for negligent failure to keep additional orders (continuations) appropriately pending over the (patent) lifetime.

  10. Joachim Martillo December 9, 2015 8:40 am

    To understand why BRI can’t be allowed in IPR, one must think like a corrupt government official.

    Maybe stalling a patent application from a small startup doesn’t raise enough money in bribes or extortion. (And, of course, stalling too many post-GATT applications might become statistically noticeable.)

    It might be possible to avoid forensic statistical analysis and to extort more money by allowing a patent and then killing it later in IPR.

    Suppose one is senior management at the USPTO and has a former associate that works in the IP office at a major tech corp.

    Just make sure an Examiner allows some claims that the major tech corporation might infringe and make sure that the claims might be reasonable in standard court construction but would not stand up to BRI in an IPR.

    Then just negotiate a price for institution of an IPR and let the claim killing machine operate.

    Obviously, the mechanism of a very dark market in IPRs and claim killing might need some refinement, but the use of BRI in IPRs provides immense possibilities for corruption especially because post-GATT patent applications are published with the first round of claims.

    Besides simple bribes and extortion, there is also immense opportunity for insider trading.

  11. American Cowboy December 9, 2015 10:05 am

    Joachim, do you have a shred of evidence to support the allegation that bribes or extortion are involved?

    I have a lot of beefs with the USPTO, but I have never sensed or evidenced that bribery is going on.

  12. Joachim Martillo December 9, 2015 11:03 am

    We know that clear violation of section 9 (b) of the STOCK Act has taken place in the recent past (e.g., the RIM NTP debacle).

    The structure of post-GATT practices, compact prosecutions, IPRs, secret quality assurance programs, et al. provide an irresistible temptation especially given the amount of money that can hinge on IP.

    The SEC and the FBI should be monitoring the PTO as closely as it does Wall Street. It is simply naive to assume that corruption isn’t taking place.

    In any case, it is wrong to set up safeguards only in response to exposed acts of criminality. The proper approach is to

    (a) analyze the system,

    (b) identify flaws that allow criminality, and then

    (c) take action to prevent it by putting safeguards in place before the criminality takes place.