“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.”
Earlier 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.