broadest reasonable interpretation : CAFC Alert

The Board Stretches the Broadest Reasonable Interpretation Standard to Broadest Possible Interpretation

Bill Schertler | October 20, 2017

In re Smith International, Inc.

September 26, 2017

Before Lourie, Reyna, Hughes.  Opinion by Lourie.

Procedural History:

Smith International (“Smith”) owns U.S. Patent No. 6,732,817 (the ‘817 patent) directed to a downhole drilling tool for oil and gas operations.  In 2012, Smith’s corporate parents, Schlumberger Holdings Corp. and Schlumberger N.V., sued Baker Hughes Inc. (“Baker Hughes”) in the United States District Court for the Southern District of Texas for, inter alia, infringement of the ’817 patent.  Baker Hughes requested ex parte reexamination of claims 28–37, 39–46, 49, and 50 of the ’817 patent.  The PTO granted the request for ex parte reexamination, which is the subject of appeal in this case.

In the reexamination, the Examiner finally rejected claims 28–36, 39, 40, 42, 79–80, 93–98, and 100 as anticipated by International Publication No. WO 00/31371 (“Eddison”).  The Examiner rejected claims 43–46, and 49 as obvious over Eddison in view of U.S. Patent 6,059,051 (“Jewkes”), and claims 28, 40, 41, 43, 50, 80, 81, 93, and 99 as obvious over Eddison, European Publication No. EP 0 246 789 (“Wardley”), and Jewkes.  Smith appealed to the Patent Trial and Appeal Board (“Board”), and the Board affirmed all of the examiner’s rejections.  The Court of Appeal for the Federal Circuit (“CAFC”) reversed the Board.

Details:

This case primarily concerns what the word “body” means in the context of the ’817 patent.

Representative claim 28 is set forth below.

28.  An expandable downhole tool for use in a drilling assembly positioned within a wellbore having an original diameter borehole and an enlarged diameter borehole, comprising:

 a body; and

at least one non-pivotable, moveable arm having at least one borehole engaging pad adapted to accommodate cutting structures or wear structures or a combination thereof and having angled surfaces that engage said body to prevent said arm from vibrating in said second position;

wherein said at least one arm is moveable between a first position defining a collapsed diameter, and a second position defining an expanded diameter approximately equal to said enlarged diameter borehole.

Fig. 4 of the ‘817 patent is reproduced below to show, inter alia, the “body” (tool body 510) and the “moveable arm” (moveable tool arm 520).

 

 

 

 

 

 

 

 

 

Reexamination

During reexamination, using the broadest reasonable interpretation standard, the Examiner construed the term “body” broadly to correspond to the “body” 18, “mandrel” 16 and “cam sleeve” 28 of Eddison.  Eddison discloses a drilling tool having a “mandrel 16” that “extends through the body 18” and “provides mounting for a cam sleeve 28,” which “cooperates with the extendable members 30 in the form of cutters 30 mounted in respective body ports 32.”  See Fig. 1 of Eddison reproduced below.

 

 

 

 

 

 

 

 

 

Relying on the broad construction of “body”, the Examiner found that Eddison teaches “at least one non-pivotable, moveable arm…having angled surfaces that engage said body” in claim 28 and corresponding elements in other independent claims.

The Board

On appeal to the Board, the Board affirmed the Examiner’s interpretation of the word “body” as a broad term that may encompass other components such as “mandrel” and “cam sleeve”.  The Board reasoned that the term “body” is a generic term that by itself provides no structural specificity.  The Board also reasoned that although “the specification describes the body as a discrete element separate from other elements,” the specification neither defines the term “body” nor precludes the Examiner’s broad reading of it.

The Board rejected Smith’s argument that one of ordinary skill in the art would understand the term “body” as a distinct element from other components.  Based on the Board’s interpretation of the term “body,” the board affirmed the Examiner’s anticipation and obviousness rejections based on Eddison.

CAFC

On appeal to the CAFC, Smith challenged the Board’s construction of the term “body” and the anticipation and obviousness determinations.  Smith argued that the Board’s interpretation of the term “body” was unreasonable and inconsistent with the specification.  More specifically, Smith argued that the Board’s interpretation of “body” as a generic term encompassing the drilling tool’s internal components was unreasonable because the specification consistently refers to and depicts the body of the drilling tool as a component distinct from other separately identified components, such as the “mandrel” or “piston” that reside inside the drilling tool.  In light of the consistent description of the body, Smith urged that the term “body” should be interpreted as an “outer housing.”

The CAFC, using the expressions “strained interpretation” and “arbitrary inclusion of elements” to describe the Board’s construction, concluded that the Board’s construction of “body” was unreasonably broad.

The CAFC reasoned that the ‘817 specification does not use the term as a generic body.  Instead, the ’817 patent separately identifies and describes various components of its drilling tool, such as the “body,” “moveable arms,” “mandrel,” “piston,” and “drive ring,” which do not support the Board’s broad reading of the claim term “body.”  In this connection, the CAFC stated “There is no dispute that the ’817 patent specification consistently describes and refers to the body as a component distinct from others, such as the mandrel, piston, and drive ring.  Therefore, the Board’s reasoning that because the specification does not ‘in and of itself proscribe the Examiner’s construction,’ the Examiner’s interpretation was reasonable, was erroneous.”

The CAFC addressed the Board’s reasoning in support of adopting the broad interpretation that “the patentee here did not act as a lexicographer, and that the specification neither defines nor precludes the examiner’s reading of the term ‘body’.”  Using this reasoning, the Board found that nothing in the specification would disallow the examiner’s interpretation, rendering it “reasonable.”  However, the CAFC responded “following such logic, any description short of an express definition or disclaimer in the specification would result in an adoption of a broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise. That is not properly giving the claim term its broadest reasonable interpretation in light of the specification.” [Emphasis added.]

Finally, the CAFC stated, “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.’”

Full Opinion

Dictionary Definitions and the Broadest Reasonable Interpretation Standard

Bill Schertler | March 3, 2016

PPC Broadband, Inc. v. Corning Optical Communications, RF, LLC (Precedential)

February 22, 2016

Before Moore, O’Malley and Wallach.  Opinion by Moore.

Summary:

Corning Optical Communications requested inter partes review (“IPR) of claims 10-25 of PPC Broadband’s US Patent No. 8,323,060, on the grounds that the claims were invalid as obvious. During the IPR proceedings, the Patent Trial and Appeal Board (“Board”) found claims 10-25 of the ‘060 patent to be obvious, relying on a general dictionary definition of the term “around” to construe the language “reside around” to mean “in the immediate vicinity of; near.” The Court of Appeals for the Federal Circuit (“CAFC”) concluded that the Board erred in its construction of “reside around”. While the Board’s construction may have resulted in the broadest definition of “reside around”, the Board’s construction was not reasonable in light of the specification.


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Tense Decision: CAFC Reverses PTAB Decision Based on the Meaning of the Word “Is”

Darrin Auito | December 2, 2015

Straight Path IP Group, Inc., v. Sipnet EU S.R.O.

November 25, 2015

CAFC Panel and opinion author: Before Dyk, Taranto, and Hughes. Opinion for the court filed by Taranto. Opinion concurring in part and dissenting in part filed by Dyk.

Summary: In an appeal from an Inter Partes Review, the CAFC reversed the Board’s decision cancelling claims 1-7 and 32-42 based on determinations of anticipation and obviousness, and remanded for further proceedings under a new claim construction.

Details

I.  Background

 Straight Path IP Group, Inc. (Straight Path) owns U.S. Patent No. 6,108,704, (“the ‘704 patent”) which describes protocols for establishing communication links through a network.

Sipnet EU S.R.O. (Sipnet) filed a petition for inter partes review against the ‘704 patent, and the PTAB instituted a review. Straight Path contended that the relevant prior art references (NetBIOS and WINS) do not read on the patent claims because the claims require a real-time check, which is not disclosed by the references. Relying on the specification, which indicates that the database only need be “relatively current,” (col. 5, lines 39-42) the PTAB rejected this construction and determined that according to the broadest reasonable interpretation (BRI standard) in light of the specification (1) claims 1-7 and 32, and 38-42 are anticipated by NetBIOS, (2) claims 1-7 and 32-42 are anticipated by WINS, and (3) claims 33-37 are obvious over NetBIOS and WINS. Sipnet EU S.R.O. v. Straight Path IP Group, Inc. (IPR2013-00246).   The PTAB adopted Signet’s view under the BRI standard in view of the specification, namely that “is connected to the computer network encompasses a processing unit that is ‘active and on-line at registration” and reached its conclusion in part because Straight Path agreed that the second process was “active and on-line” at least at registration in both NetBIOS and WINS.

Claim 1 is representative of the asserted claims (emphasis added to highlight the key claim phrase at issue):

1.  A computer program product for use with a computer system, the computer system executing a first process and operatively connectable to a second process and a server over a computer network, the computer program product comprising:

a computer usable medium having program code embodied in the medium, the program code comprising:

program code for transmitting to the server a network protocol address received by the first process following connection to the computer network;

program code for transmitting, to the server, a query as to whether the second process is connected to the computer network;

program code for receiving a network protocol address of the second process from the server, when the second process is connected to the computer network; and

program code, responsive to the network protocol address of the second process, for establishing a point-to-point communication link between the first process and the second process over the computer network.

 

 

 

 

 

On appeal, the patentability issues ultimately depend on the construction of the term “is connected to the network.”

II.  Decision

a. The CAFC reversed the PTAB’s cancellation of the challenged claims and remanded for further proceedings based on a new claim construction

In a 2-1 decision, a majority seized on the present tense meaning of “is” in the claim language and held that the PTAB’s construction of the disputed phrase “is not a reasonable interpretation of the claim language, considering its plain and ordinary meaning.”

According to the majority, “the query required by the claim language asks if the callee ‘is’ online, which is a question about the status at the time of the query. But the [PTAB] did not address the facially clear meaning, instead turning immediately to the specification.” The majority highlighted that in this situation, “the specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant aspects.” Regardless, the majority stated that the specification does not provide a basis for reasonably adopting a construction that contradicts the plain meaning of the claim language (i.e., passage relied upon by PTAB says nothing more than that the unit is active and online – available for communication – at the time it registers.) The majority also jumped on an exchange at oral argument wherein Sipnet’s counsel agreed that “[w]hen somebody registers, that registration means, right then and there, they’re active and online” and “[t]hat could be out of date (a day later)”. The majority also emphasized that “the plain meaning is positively confirmed by the prosecution history, which we have indicated is to be consulted even in determining a claim’s broadest reasonable interpretation.” The majority cited arguments made by Straight Path to overcome a rejection during reexamination (e.g., “NetBIOS does not teach that an active name in NetBIOS is synonymous with ‘whether the second process is connected to the computer network.’”)

Sipnet’s attempt to challenge the claim language for not adequately describing or enabling the systems or processes involving a query about current connection status under Straight Path’s claim construction was rejected by the majority, which pointed out that the statute limits IPR challenges to prior-art, not written-description and enablement. 35 U.S.C. 311(b).

Straight Path’s challenge that PTAB failed to construe “process” was rejected because it did not preserve that contention, e.g., did not request construction in its preliminary response, in its response after the PTAB initiated review, or at the oral hearing before the PTAB.

The majority therefore remanded this case to the PTAB in order to apply the construction – “is connected to the computer network at the time the query is transmitted to the server” – in considering the prior art, including NetBIOS and WINS.

b. Dissent – The word “is” does not require “absolute currency”

In a separate opinion, J. Dyk dissented from the majority’s claim construction of the term “is connected to the computer network” to require absolute currency in a real-time assessment of connectivity.

First, using the following hypothetical example, J. Dyk argued that ordinary usage easily accommodates the Board’s interpretation of “is connected.”

“If a person says that ‘John is at home,’ this might lead to the question: ‘How do you know?’ The response ‘I spoke to him five minutes ago’ would not be viewed as contradicting the original statement, even though John might have left home in the intervening five minutes. In other words, the use of the word ‘is’ does not necessarily imply absolute accuracy or absolute currency.”

J. Dyk continued by attacking the majority for minimizing the role of the specification during claim construction. “[U]nder the Phillips approach, we must look to the specification as the ‘single best guide to the meaning of a disputed term.’ This is true, contrary to the majority’s assertion, even in cases were language, on its face, appears to have a plain meaning, because, as Phillips states, the specification ‘is always highly relevant to the claim construction analysis.’” (emphasis added).

J. Dyk points out that the specification “describes that, when a query is received, the server ‘searches the database … to determine whether the callee is logged-in by finding any stored information corresponding’ to that queried user” (emphasis added) … and that “[t]his information in the database, as described in the specification, is kept ‘relatively current.” According to J. Dyk, checking historical “relatively current” information in a database is not a “real time” determination and that there is no disclosure in the specification that would warrant construing “is connected” to require absolute accuracy, as required by the majority.

Lastly, J. Dyk argued that the majority’s insistence that “is” requires absolute currency is contrary to this Court’s prior decision in Paragon Solutions, LLC v. Timex Corp 566 F.3d 1075 (CAFC 2009), holding that a reference to “real time” does not necessarily require absolute currency.

Take Away

• The PTAB will interpret claims of an unexpired patent using the broadest reasonable interpretation (BRI) in light of the specification. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 CFR 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279 (CAFC 2015).

• The BRI standard does not apply to expired patents (e.g., when a patent term expires during the PTO-litigation proceeding). Instead, the claim construction standard moves to a standard “pursuant to the principle set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (words ‘are generally given their ordinary and customary meaning’ as understood by a person of ordinary skill in the art in question at the time of the invention)” [MPEP §2258.I.G].

• Consider advancing claim constructions under the BRI standard and the Phillips standard if there is a chance that a patent in a PTO-litigation proceeding will expire before the end of the proceeding.

• Typical assumption – The Phillips standard results in a narrower construction than the BRI standard. However, in this case, both the majority and dissent concluded there is “no significant difference between the Phillips and BRI standards.”

• Always be prepared to answer questions at oral hearing (CAFC and PTAB). Here, the majority seized on an exchange between Sipnet’s counsel and the Court to support its claim construction position.

• A Final Written Determination is not necessarily final. The CAFC has reversed two PTAB decisions invalidating claims, in addition to reversing other PTAB decisions validating claims.

• Claim drafting – Words matter. Tense matters. Recognize the significance.

Full Opinion

U.S. Patent 6108704

CAFC’s majority says that a PTO’ decision to institute IPR is not appealable even after a final decision and a broadest reasonable interpretation rule applies in IPR

Yoshiya Nakamura | July 22, 2015

In Re Cuozzo Speed Technologies, LLC

July 8, 2015

Before: Newman, Clevenger, and DYK. Opinion by DYK. Dissenting opinion by Newman.

Summary

Garmin filed in the PTO a petition to institute an inter partes review (IPR) on patented claims owned by Cuozzo. The PTO granted the petition to institute the IPR and concluded that the claims at issue were obvious over prior art. Cuozzo appealed to CAFC, arguing: (1) the petition was defective as failing to identify prior art references for each claim; and (2) a broadest reasonable interpretation (BRI) standard should not be applied in the obviousness determination. CAFC held: (1) the statute prohibits a review on the PTO’s decision to institute the IPR even the final decision was on appeal; and (2) the BRI standard applies in IPR.

Japanese Summary

本判決は、(1)第三者の請求に基づく特許付与後レビュー(inter partes review; IPR)においてその請求書の内容に問題があった場合にそれをCAFCが審査できるか否か、および(2)クレーム解釈の基準として、最大限に広い合理的な解釈(a broadest reasonable interpretation: BRI)をIPRの審査に使用してよいか否かという争点に関するものである。

IPRは2段階の手続きであり、まず特許庁は第三者が提示した請求内容がIPRでの審査を開始するための要件を満足しているかを決定し、レビューを開始すると決定した場合、特許クレームが無効であるか否かを決定する。本件では、文献の引用が一部欠落しているクレームに対して特許庁がレビューを開始し、無効の結論を出した。特許権者はレビュー開始の決定が違法であるとして控訴したが、CAFCは、特許庁がレビューを開始するという決定は控訴可能な対象ではなく、特許庁が正しい引用例で結論を出したので問題ではないと判断した。

またIPRではクレーム補正の機会は制限され、従前の再審査よりも司法手続きに近い制度である。特許権者は、補正制限等のあるIPRでは、クレーム解釈の基準として、最大限に広く合理的な解釈(BRI)を使用すべきではないと主張した。CAFCは、IPRを含めて特許庁における付与後見直しにBRIの基準を使用することは長年の運用で認められており、法律上も問題ないと判断した。
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