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Federal Circuit Reverses PTAB’s Unreasonably Broad BRI of term

Federal CircuitIn re Smith Int’l, Inc., (Fed. Cir. Sep. 26, 2017) (Before Lourie, Reyna, and Hughes, J.) (Opinion for the court, Lourie, J.).

Smith International owns U.S. Patent 6,732,817 (’817 Patent) directed to a downhole drilling tool that includes a “generally cylindrical tool body” associated with other device components, such as a mandrel and a cam sleeve. The ’817 Patent was the subject of an ex parte reexamination, brought during a patent infringement case Smith asserted against Baker Hughes. During the reexamination, both the PTO and the Board agreed that the broadest reasonable interpretation of “body” in the claims could encompass other components, because the claims lacked further limiting features, and the specification does not prohibit this reading. Given this broad meaning of “body,” the Board found that several claims were anticipated and obvious. Smith appealed.

The Court reversed, finding that the Board’s construction of “body” was unreasonably broad. While the claims do recite “body” without further elaboration, the specification does not use the term generically. The “body” is consistently referred to as a component distinct from others, such as the mandrel. Additionally, the Court rejected the Board’s reasoning that the specification did not proscribe its broad reading. The broadest reasonable interpretation “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.” The Board’s logic would improperly require the broadest possible (not reasonable) interpretation, absent an express definition or prohibition.

The Board’s findings of anticipation relied on its unreasonably broad construction of “body,” which lacked substantial evidence.

The broadest reasonable interpretation of a term in a patent claim must be consistent with the specification. An analysis looking for whether the broadest possible meaning is proscribed by the specification is a backwards approach to claim interpretations and is improper.

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