BRI v. Plain and Ordinary Meaning in Claim Construction: Much Ado About Nothing?

By Sarah Barrows
April 18, 2016

supreme-court-building-10-2010The Supreme Court is scheduled to hear oral argument in the In re Cuozzo Speed Technologies matter on April 25, 2016—taking on two issues concerning the inter partes review (IPR) process for challenging the validity of a United States patent before the United States Patent and Trademark Office: (1) whether the Patent Trial and Appellate Board (the Board) may construe claims in an issued patent according to their broadest reasonable interpretation (BRI) rather than their plain and ordinary meaning; and (2) whether the Board’s decision whether or not to institute an IPR proceeding is judicially unreviewable.[1]

Most can agree that bestowing the Board with unchecked power as the final arbiter of whether or not to institute an IPR proceeding will have a dramatic and measurable impact on the power of the Board. Weighing the impact of the claim construction standard applied in an IPR, however, is less clear.

On one hand, logic dictates that the broader the interpretation of the claim, the more extensive the array of relevant prior art—and in turn the more likely that the claim will be held invalid in light of that prior art. This is precisely the argument patent owner Cuozzo Speed Technologies, LLC (“Cuozzo”) makes in its opening merits brief to the Supreme Court.[2]

On the other hand, evaluating whether the Board’s use of the BRI protocol in an IPR claim construction will lead to “different results” than the plain and ordinary meaning construction used by federal courts in claim construction[3] is complicated by the relatively scant evidence on the subject, and the inevitable fact that this evidence is naturally dependent on particular prior art and invalidity and obviousness arguments specific to a particular patent. Even putting aside the question of what impact a different claim construction standard may have in an IPR, In re Cuozzo Speed Technologies will not address several powerful differences between an IPR and district court litigation that impact whether a particular patent claim survives. For example, the burden of proof in an IPR is the preponderance of evidence rather than the clear and convincing evidence required in federal court; the presumption of validity of the patent is not assumed in an IPR as it is in federal court; and the ultimate arbiter is an administrative law judge panel with technical training as opposed to the average juror in a patent trial. Against this backdrop, can Cuozzo fairly claim, as it has, that the Board’s broadest reasonable interpretation claim construction standard is a primary reason that nearly 87% of the IPR trials completed to date have resulted in the cancellation of some or all of the claims in patents under review in an IPR proceeding?[4]

Because the initiation of an IPR proceeding itself often either stays the entire concurrent federal court litigation or eventually obviates the need for a Markman hearing in the federal district court, there are not very many instances where an IPR claim construction can be compared to the claim construction order issued by a federal district judge for the same term and patent.

In re Cuozzo Speed Technologies is a perfect example: Cuozzo filed four patent infringement cases for the 6,778,074 patent at issue against Tom Tom, Inc.; JVC Americas Corp.; General Motors Company; and Garmin Int’l Inc. before Garmin petitioned the Board for an IPR.[5] The 6,778,074 patent at issue in the Cuozzo litigations covers a type of speedometer that changes color to indicate to the driver when the speed of their car exceeds the speed limit in a particular geographic area. However, a claim construction order was not issued in any of the district court cases involving this patent—while Markman briefing was complete in at least three of the four litigations pending when Garmin petitioned for an IPR, the district court adjourned any Markman hearings until after the IPR ruling. Notably, there was no claim construction briefing in Cuozzo’s litigation against Garmin.

The claim construction term at issue in the Cuozzo IPR that the Federal Circuit ultimately upheld under the BRI standard, focused on the term “integrally attached” in an independent claim at issue: claim 10 disclosing a colored display showing the current speed limit, where the colored display is “integrally attached” to the speedometer.[6] In the IPR proceeding, Cuozzo modified its proposed construction of the term “integrally attached” from the definition it initially adopted in the federal court litigations. In the federal court litigations where Cuozzo filed claim construction briefs, it defined the claimed speed limit indicator comprising a speedometer “integrally attached” to a color display as: “an instrument with components for measuring and displaying speed that are attached or combined to work as a complete unit with a device for representing information in one or more colors.” In the IPR proceeding, Cuozzo essentially maintained this construction by arguing the term “integrally attached” should be construed as: “joined or combined to work as a complete unit.”[7] Garmin’s proposed construction in the IPR argued that “integrally attached” should be construed as: “discrete parts physically joined together as a unit without each part losing its own separate identity.”[8] In blessing the Board’s adoption of Garmin’s construction of the “integrally attached” term, the Federal Circuit explained, “[t]he word attached must be given some meaning. As the Board explained, it would be “illogical to regard one unit as being ‘attached’ to itself.’”[9] The Federal Circuit also found that the specification further supported the Board’s construction. Unfortunately, there is no real way to try and read the tea leaves here because there is no way to know whether Cuozzo’s construction of “integrally attached” would have been adopted under the plain and ordinary meaning standard of claim construction.

Although they are few and far between, there are cases where a federal district court has issued a claim construction order on the same terms as the Board in an IPR.

In Intellectual Ventures I LLC and Intellectual Ventures II LLC v. Toshiba Corp. et al., Case No. 13-cv-453-SLR, Delaware District Court Judge Robinson issued a claim construction order that construed terms from two patents that the Board had issued final written decisions on in an IPR.[10] Specifically, two of the five patents in Intellectual Ventures case against Toshiba were the subject of IPR trials—U.S. patent numbers 5,500,819 (“the ’891 patent”) and 7,836,371 (“the ’371 patent”). Judge Robinson declined to stay the federal court litigation pending resolution of these IPR trials and noted there would not be a duplication of efforts between the two tribunals because of the different claim construction standards, different standard for burden of proof, and the fact that only two of the five patents at issue were the subject of an IPR trial, whereas Toshiba’s allegedly infringing products were alleged to infringe all five of the patents asserted by Intellectual Ventures.[11] Judge Robinson addressed Toshiba’s argument that denying the stay as to the IPR posed the real possibility that the federal court and PTO could issue inconsistent rulings by explaining that this risk was contemplated before the enactment of the AIA, and observed that this potential risk has not “generated much concern or resulted in . . . ‘awkwardness’ at the Federal Circuit or elsewhere. Indeed, when you keep both the administrative and judicial tracks moving, the competitive business world benefits from the timely presentation of both in the Federal Circuit, the final arbiter of any substantive differences: more information generally makes for a better decision.”[12]

The IPR trial of the ’371 patent at issue in Intellectual Ventures I LLC and Intellectual Ventures II LLC v. Toshiba Corp. et al. used the BRI to interpret the claims at issue. In the IPR, the parties did not disagree with the Board’s preliminary constructions for the claim terms at issue.[13] The Board did not cancel claims 2 and 7-10 of the ’371 patent, and the district court case is set for trial on January 17, 2017, so it will be some time before it is known whether the claims that survived the IPR trial will be found invalid. In the meantime, following the IPR’s final written decision on July 9, 2015 cancelling claims 1-3 and 6 of the ’371 patent, both parties proposed specific claim constructions in the district court litigation for a term found in claim 7: “system operation signals on said system bus during normal system operation.” Judge Robinson’s claim construction order adopted patent owner Intellectual Ventures construction, which was slightly different than the Board’s construction, and quite different from Toshiba’s proposed construction:

Claim 7: “. . . system operation signals on said system bus during normal system operation . . . .”
Board’s Construction in IPR Toshiba’s Proposed Construction in Delaware district Court Intellectual Ventures Proposed Constrtiucon Adopted by Judge Robinson in Delaware District Court
signals internal to the integrated circuit when the integrated circuit is in a normal operation mode signals internal to the integrated circuit on said system bus when the integrated circuit is in a normal operation mode and not in a test mode signals internal to the integrated circuit on said system bus when the integrated circuit is operating normally

The Board’s construction of the term in claim 7 was not disputed and does not appear relevant to the Board’s finding that claim 7 was not anticipated under 35 U.S.C. § 102. In the Delaware district court, Intellectual Ventures argued that, “Toshiba’s construction makes explicit the distinction in the patent claims and specification that ‘normal system operation’ (normal operation mode) is distinct from debug operation or rest operation (test mode).”[14] Judge Robinson’s claim construction order discusses the fact that the specification describes a “normal mode” and “test mode” which does not define “normal system operations” and declined to import those limitations into the term “normal system operation” set forth in claim 7.

With respect to the ’819 patent still pending in Delaware district court in Intellectual Ventures I LLC and Intellectual Ventures II LLC, the Board ultimately applied the plain and ordinary meaning claim construction standard for the ’819 patent because the ’819 patent had expired, and the Board’s review of the claims of an expired patent tracks the district court’s plain and ordinary claim construction standard articulated in Phillips v. AWH Corp., 415 F. 3d 1303, 1312 (Fed. Cir. 2005). The Board determined that no express claim construction was required because Toshiba asserted that the claim terms should be given their ordinary and customary meanings and the patent owner Intellectual Ventures did not dispute that conclusion or provide an alternate construction.[15] Although the Board rejected claims 1-11 and 17-19 of the ’819 patent, Judge Robinson issued a claim construction order on terms in claims 17-19 because the Board had not ruled on Intellectual Venture’s request for a rehearing when Judge Robinson issued her claim construction order (and has still not ruled on Intellectual Venture’s request).[16] In the district court litigation before Judge Robinson, both parties elected to submit specific constructions of terms at the claims in issue for the ’891 patent. Judge Robinson’s order adopted Toshiba’s proposed constructions. However, because the Board did not submit any specific claim constructions and assigned their ordinary and customary meanings pursuant to Toshiba’s undisputed request, there is not an opportunity to compare claim constructions by the district court and Board for the ’819 patent.

In at least one instance where the Board has construed a claim differently than the district court, the Board’s construction was articulated by the Board as “consistent with the ordinary and customary meaning of the term as it would be understood by one of ordinary skill in the art[,].” In other words, something very closely approaching the plain and ordinary meaning the district court applies during claim construction. Specifically, in Vibrant Media Inc. v. General Electric, Co. IPR2013-00170, the Board addressed the definition of many terms of U.S. Patent No. 6,581,065 that Delaware District Court Judge Leonard Stark had construed in his claim construction order in the litigation brought by G.E. against Vibrant Media, Inc. and Kontera Technologies, Inc.[17] The ’065 patent at issue involves a system for automatically providing hypertext for character strings of a text file at a content server—such as a system that automatically enters hypertext links like a newspaper article into a computer file.[18] In the IPR, the Board expressly interpreted three claim terms that Judge Stark had already construed and agreed with Judge Stark’s constructions of the terms “class code” and “major class code” that G.E. proposed in its claim construction briefing.[19] In other words, the Board adopted G.E.’s construction of these terms which the district court had expressly adopted. In adopting the district court and G.E.’s construction, the Board found that the district court’s construction would not affect the outcome of the prior art analysis, and petitioner Vibrant Media agreed.[20] However, as to the term “preferred major class code,” the Board rejected the district court’s construction (which had again adopted G.E.’s construction). The Board explained that because the district court’s construction would improperly import a limitation from the specification into the claims, and construed the term “preferred major class code” as a major class code that is desired or given priority, “consistent with the ordinary and customary meaning of the term as would be understood by one of ordinary skill in the art in the context of the written description of the ’065 patent.”[21] On its face, the Board’s construction does not appear to be broader than the construction assigned by the district court.

And in some instances, the Board has outright adopted the same claim construction under the BRI standard as the district court did in applying the plain and ordinary meaning to the disputed claim terms. For example, in Google Inc. v. Simpleair, Inc., CBM2014-00054, the Board adopted the same claim construction for the claim terms in patent 7,035,914 (“the ’914 patent”) under the BRI standard as the district court did in applying the plain and ordinary meaning to the disputed claim terms. In Google’s IPR of the ’914 patent, both parties suggested the adoption of the district court’s construction and the Board agreed, finding the constructions were consistent with the broadest reasonable interpretation.[22] A similar result was reached in Kyocera Corp., Motorola Mobility LLC v. Softview, LLC, IPR201300004? IPR201300257, where the Board issued a final written decision explaining that, “we construed the claim terms as the Petitioner represented they were construed by the district court in copending litigation”[23] because it found the constructions to be “consistent with the broadest reasonable construction.”[24]

Regardless of which way the wind blows in the Supreme Court’s ruling on In re Cuozzo Speed Technologies, the Federal Circuit has itself made clear that even the BRI has bright line rules steeped in well-established patent law principles. Only a few months after upholding the BRI standard for claim construction review in an IPR, the Federal Circuit reversed the Board’s claim construction in both Microsoft v. Proxyconn, 789 F.3d 1292 (Fed. Cir. 2015) and Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 806 F.3d 1358. (Fed. Cir. 2015). The Federal Circuit clarified that even the BRI has limits, admonishing that although it rejected Proxyconn’s argument that the Board legally erred in using the broadest reasonable interpretation standard during IPRs, “[t]hat is not to say, however, that the Board may construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.”[25] The Federal Circuit went on to advise that under the BRI, the Board should read claims in light of the specification and teachings in the underlying patent and consult the patent prosecution history.[26] The Federal Circuit clarified 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.”[27] According to the Federal Circuit, a construction that is unreasonably broad is one that does not “reasonably reflect the plain language and disclosure” provided in the patent itself.[28]

Notably, when applying the Federal Circuit’s new construction of the terms it found the Board had erroneously construed under the BRI, the Board found that five of the claims at issue were anticipated by prior art, and even went a step further in finding that three claims were obvious where it has originally found them to only be anticipated. This suggests the limitations of claim construction—while it depends on the particulars of the prior art in any case where claim construction is at issue, it is certainly the most strategic option for the patent-challenger to always strive to find a path to invalidation regardless of the claim construction ultimately adopted in the proceeding, whether it be in an IPR or federal district court litigation.

In Straight Path IP Group, the Federal Circuit’s reversal of the Board’s claim construction emphasized the need for claim construction under the BRI to address the “facially clear meaning” of the claim language.[29] The claim language at issue involved interpreting the meaning of “is” in the claim language: “is connected to the computer network[.]” President Bill Clinton’s famous deposition testimony, “it depends what the definition of is is . . .”[30] has often been criticized as a dodge to avoid admitting to an affair with Monica Lewinsky. But the Board and Federal Circuit’s different conclusion of whether “is” implicitly denotes the present tense gives a belated nod to President Clinton’s hedging under oath. In ruling that the Board’s interpretation of “is” could not reasonably disregard the present-tense limitation of “is” by simply requiring the computer to be registered with the server, the Federal Circuit criticized the Board for turning the patent specification to support a claim interpretation at odds with the plain meaning of the claim language itself. In the view of the Federal Circuit and Straight Path IP Group, the “present tense ‘is’ in ‘is connected to the computer network’ plainly says that the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.”[31]

The Federal Circuit’s opinions in Straight Path IP Group and Proxyconn indicate that even if the Supreme Court upholds the broadest reasonable interpretation standard for claim construction in an IPR, well-established claim construction rules, such as applying the plain meaning of a claim language absent a clear redefinition or disavowal, will continue to be the bright line rules for claim construction. The PTO’s merit brief to U.S. Supreme Court that defends the PTO’s use of the BRI claim construction standard appears to echo this point by explaining that the BRI is “used only to choose among ‘reasonable’ interpretations of disputed claim language i.e., the interpretations that are consistent with the text of the claim and with the specification.”[32]

All told, while In re Cuozzo Speed Technologies may prompt a Supreme Court decision that plumbs the depths of congressional intent and wades into the various policy arguments for assigning a particular claim construction interpretation standard in IPR proceedings, the practical reality of the impact of the claim construction standard assigned may be much ado about nothing —or just the tip of the iceberg in addressing whether (and what) incongruities should exist between an IPR and district court litigation aimed at invalidating a patent.



[2] at p. I.

[3] Id. at p. 13.

[4] Id. at p. I. at p. I.


[6] In re Cuozzo Speed Tech., LLC, 778 F. 3d 1271, 1283 (Fed. Cir. 2015).

[7] Cuozzo, 778 F. 3d at 1283.

[8] Cuozzo, 778 F. 3d at 1283.

[9] Cuozzo, 778 F. 3d at 1283.

[10] See Case No. 13-453-SLR, Docket No. 277.

[11] Id. at Docket No. 41.

[12] Id. at p. 9.

[13] IPR2014-00310, July 9, 2015, Paper 30 at pp. 6-7.

[14] Case No. 13-cv-453-SLR, Docket No. 200 at p. 19-20

[15] IPR2014-00418, August 7, 2015, Paper 28, Final Written Decision at p.7.

[16] NOTE: confirmed as of 4-04-16.

[17] General Electric Co. v. Kontera Tech., Inc. v. Vibrant Media, Inc., Case No. 12-cv-525-LPS, 2013 WL 4757516, at *2-3 (D. Del. Sept. 3, 2013).

[18] See U.S. Patent No. 6,581,065:

[19] General Electric Co. v. Kontera Tech., Inc. v. Vibrant Media, Inc., Case No. 12-cv-525-LPS, 2013 WL 4757516, at *2 (D. Del. Sept. 3, 2013); see e.g., General Electric Co. v. Kontera Tech., Inc. v. Vibrant Media, Inc., Case No. 12-cv-525-LPS, Docket Nos. 35, 40, 42.

[20] Vibrant Media, Inc. v. General Electric Co., IPR2013-00170, June 26, 2014, Paper No. 56, p. 9.

[21] Id. at p. 9-10.

[22] See CBM2014-00054, May 13, 2014, Paper No. 19 at pp. 9-11.

[23] Kyocera Corp., Motorola Mobility LLC v. Softview, LLC, IPR201300004?

IPR201300257, March 21, 2014, Paper No. 53, p. 5.

[24] Kyocera, IPR201300004, Paper No. 12, p. 19.

[25] Proxyconn, 789 F.3d at 1298.

[26] Id. at 1298.

[27] Id.

[28] Id.

[29] Straight Path IP Group, 806 F.3d at 1360.

[30] and

[31] Straight Path IP Group, 806 F.3d at 1360.

[32] at p. 27.


The Author

Sarah Barrows

Sarah Barrows focuses her practice on patent, copyright, trade secret and false advertising litigations. She represents clients in a variety of intellectual property matters, including branded-side Hatch-Waxman litigation and other patent litigations relating to a broad range of technologies. Sarah’s general litigation experience includes products liability, fraud, tortious interference, wrongful termination, defamation and breach of contract. Sarah is experienced in class action litigation and litigation in state and federal courts, including trial and appellate work. For more information and to contact Sarah please visit her firm profile page.

Warning & Disclaimer: The pages, articles and comments on 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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 17 Comments comments.

  1. Pro Se April 18, 2016 12:29 pm

    This issue is this:

    If I were to copy this article and place it on my website without expressed permission, under IP law that is copyright infringement. I can’t take a dictionary and make the defense that because the words used to create this unique piece is in the dictionary, I have a right to use the piece as a whole because the author’s piece is anticipated by the dictionary.

    In BRI based IPR patent challenges, petitioners are taking excerpts from broad specification publications and piecing together (like a puzzle) a recreation of patent claims. Claims are the “rights” outlined in the patent, but yet the “dictionary” of prior publications are open under BRI to somehow claim that someone would be keen enough to take a group of parts from various publications, to come up with patent claims.

    The four corners of Net Moneyin Inc. v. Verisign, Inc. still should hold merit.

  2. Patent Investor April 18, 2016 1:27 pm

    “evaluating whether the Board’s use of the BRI protocol in an IPR claim construction will lead to “different results” than the plain and ordinary meaning construction used by federal courts in claim construction[3] is complicated by the relatively scant evidence on the subject”.

    Judge Moore certainly has an opinion on the subject and Judges O’Malley and Wallach did not differ in their opinion enough to write a dissent, “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. “

  3. Texas Bob April 18, 2016 1:52 pm

    Patent Investor,
    You seem surprised that the Cuozzo dissent would volunteer such in dicta, after granting of cert. A transparent attempt to legislate from the bench.

  4. Anon April 18, 2016 6:36 pm

    I have not seen the argument picked up here that in this particular case, the applicant is arguing for a broader meaning and that BRI is too limited.

    Another writer suggested that having a broader meaning is highly desired in a counter-intuitive manner.

    Most would think that a broader meaning is just more “deadly,” and stop thinking there.

    But this other writer posited that having a broader meaning to begin with allows a narrowing amendment to be something different than what can be reached by the Office version of the claim meaning (the patent holder has been denied an amendment because it did not fit within the Office version).

    An analogy might be to consider the Office version constricting real estate to be a useless swamp land near some valuable beachfront property. The Patent holder wants the scope larger to include BOTH the swamp and the beachfront property. If the original claim is thusly understood, a claim amendment with less – but more valuable – scope then “should be” within their grasp in the IPR process.

  5. Anon April 18, 2016 6:37 pm

    Another post caught in the filter – please release.

  6. Paul F. Morgan April 19, 2016 9:06 am

    Sarah, thank you for another highly factual discussion re the popular myth that changing from BRI to Phillips or other D.C. claim interpretation would make a big average difference in IPR outcomes. Also for noting the big difference in predictable outcomes between the two different cert questions in Cuozzo, of which BRI is only the subject of the first.
    Patent Investor, you are repeating the same post-Cuozzo-briefing panel decision pure dicta from the already discussed in comments in Gene’s post just prior to this one.
    Pro se, what you are bothered by in current 103 reference combinations [not just in IPRs] is the result of the prior Sup. Ct. decision in in KSR, and this Cuozzo decision will not change that. Arguing “non-analogous art” is still possible, but much harder.

  7. Anon April 20, 2016 7:09 am

    Mr. Morgan,

    I am not sure that you grasp the point that there remains a difference – and that it is just not appropriate to say that in the aggregate likelihood, that difference will be minimal.

  8. Night Writer April 20, 2016 8:16 am

    @1 Pro se: well said.

  9. Night Writer April 20, 2016 8:18 am

    @6 Paul: consistent with your anti-patent policies Paul. But, Phillips is not the same as BRI. Anyone that has written Markman briefs and done prosecution knows there is a difference. But, you sure do write well.

  10. Paul F. Morgan April 20, 2016 8:37 am

    More careful reading would note that I did not say there is no difference between BRI and Phillips claim construction. I said that would not “make a big average difference in IPR outcomes.” Phillips itself spells out one [narrowly applicable] difference.

  11. Anon April 20, 2016 5:08 pm

    Mr. Morgan @ 10,

    It is a bit disingenuous and a game of smoke and mirrors that is going on here with trying to point out “X” number of cases in which the result of claim construction would be the same for BRI and for Article III court cases.

    The bottom line is that the two terms are defined to be different and operate in different contexts.

    Would everyone be “OK” with this situation if we all simply agreed to apply the Philips claim construction (by law) and removed BRI entirely from consideration?

    Why is it then that I get the feeling that some reason for not doing so would “all of a sudden” appear?

  12. Paul F. Morgan April 20, 2016 6:42 pm

    Anon, there is no real evidence that it would make much of any difference in overall % results to have Phillips claim construction in IPRs. Some APJs have even asked IPR parties that question.
    But doing so would lead to several problems – to have it only in IPRs yet have BRI retained in reexaminations, reissues, CBMs, interferences, derivation proceedings, etc. even for the same claims.

  13. Paul F. Morgan April 20, 2016 6:54 pm

    BTW, a previously noted, many folks who should know better seem to be assuming that the Sup. Ct. has a free and equal choice on this IPR “to BRI or not to BRI” issue. They do not. They are constrained by their own case law on Chevron Deference. The controlling basic principle of federal administrative law applicable to this case is in Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984), and subsequent cases thereon. Holding that federal agencies are generally entitled to deference from the federal courts when those agencies interpret statutes that they implement, unless Congress has clearly already resolved the interpretive issue at hand. It is particular applicable where Congress has expressly delegated rulemaking implementation of the statute to the agency, as Congress did for Inter Partes Reviews in 35 U.S.C. 316 (a) and (b). In particular, United States v. Mead Corp., 533 U.S. 218, 226–27 (2001) states: “We hold that administrative implementation of a particular statutory provision qualifies for Chevron deference when it appears that Congress delegated authority to the agency generally to make rules carrying the force of law, and that the agency interpretation claiming deference was promulgated in the exercise of that authority.” Mead Corp. and other opinions also note that the “consistency” of an agency interpretation is a factor to be considered when evaluating the agency interpretation persuasiveness. The PTO has consistently applied this same BRI test in all of its patent proceedings for its entire modern history! Including modern interferences, which are also inter parte proceedings in which issued patent claims can be invalidated with prior art, and claim amendments are very restricted.

  14. Anon April 20, 2016 8:05 pm

    Paul, your post at 12 is NOT a valid reply – you are merely repeating what I was responding to WITHOUT responding to the substance of my comment.

    Why not push for ALL such items to be done in the Philips style with NO BRI for post grant reviews?

    I would bet if that were on the table, I could guarantee I know who would be singing a different tune.

    Further, I am not so sure that the level of Chevron deference is as you would paint it (and a history of misapplication is no savings grace – take Trademark law for example – plenty of “history” that will no longer fly vis a vis the “slants” case).

  15. Night Writer April 20, 2016 11:51 pm

    @13: Unless it is not a matter of statutory interpretation.

  16. step back April 25, 2016 3:59 pm

    link to Cuzzo oral arguments can be found here:

  17. Paul F. Morgan May 10, 2016 8:05 pm

    Further re the Cuozzo related hyperbole on BRI and IPR claim amendments, the PTAB just released a statistical study report. Among the interesting facts, roughly 90% of IPR patent owners never ever even TRY to amend their claims! [Too bad this study was not finished earlier.]