In a pair of decisions from related IPR appeals, the Federal Circuit reversed and remanded portions of two final written decisions related to the same patent and parties because the PTAB’s construction of the claims was unreasonably broad. See, PPC Broadband, Inc. v. Corning Optical Comm’ns, Appeal Nos. 2015-1361, et al. (Fed. Cir., Feb. 22, 2016); PPC Broadband, Inc. v. Corning Optical Comm’ns, Appeal No. 2015-1364 (Fed. Cir., Feb. 22, 2016). The Federal Circuit highlighted the differences between the BRI standard applied by the USPTO and the PTAB and the Phillips standard applied in the courts, and in analyzing the PTAB’s application of the BRI standard, the CAFC focused extensively on the reasonableness of the PTAB’s construction, differentiating between a broadest possible interpretation, which may be overly broad, and the broadest reasonable interpretation in light of the claims and specification.
Above all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.
The decision in Appeal No. 1361 provides a helpful comparison between claim terms that were properly construed and claim terms that were construed overly-broadly under the BRI standard. Relative to a first claim term (“continuity member”), the court concluded that the PTAB’s construction was correct under the BRI because there was at least some language in the specification to support the PTAB’s interpretation. In contrast, relative to a second claim term (“maintain electrical continuity”), the court concluded that the PTAB’s construction was unreasonably broad because it essentially ignored express language from several claims that suggested a narrower construction based on a recited functional effect of the claimed arrangement. Thus, the court vacated the PTAB’s decision relative to the claims containing the second claim term and remanded the case to the PTAB for further proceedings based on the correct BRI.
Another interesting feature of this decision is the length to which the Federal Circuit went to explain that the BRI is not necessarily the same as “the correct construction laid out in Phillips” applied by the courts. After providing a lengthy analysis of the proper construction of the claim term under the Phillips standard, the court then acknowledges, however, that “[u]nder Cuozzo, claims are given their broadest reasonable interpretation consistent with the specification, not necessarily the correct construction under the framework laid out in Phillips.” PPC, Appeal No. 1361, (Slip Op. at 10). All of this analysis and discussion relative to the Phillips standard is arguably unnecessary and irrelevant to the outcome of the cases. Why should the court spend its time on what is apparently pure dicta? Perhaps the panel is providing a helping primer for the impending Supreme Court review of the Cuozo on certiorari, to more clearly explain the important differences between the BRI and the Phillips standards. In any event, the multiple references to “the correct construction” (under Phillips) is interesting, if nothing else.
Turning to the decision in Appeal No. 1364, the Federal Circuit explains that the PTAB cannot simply rely on dictionary definitions to reach a construction without explaining what is taught in the claims and the specification. Initially, the court notes that the PTAB “seems to have arrived at its construction by referencing the dictionaries cited by the parties and simply selecting the broadest definition therein.” PPC, Appeal No. 1364 (Slip Op., at 6). However, the court reasons, “[w]hile such an approach may result in the broadest definition, it does not necessarily result in the broadest reasonable definition in light of the specification. The Board’s approach in this case fails to account for how the claims themselves and the specification inform the ordinarily skilled artisan as precisely which ordinary definition the patentee was using.” Id., at 7. “The fact that [the term] has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of the specification.” Id. After thoroughly reviewing the usage of the disputed term in the both the claims and the specification, the court found that the specification “leaves no doubt” about the BRI encompassing only a narrower set of all the possible meanings found in the dictionaries. Even though the usage and meaning supported by the specification would not encompass all of the exemplary embodiments, the court found the proper BRI to be narrower than the broadest available dictionary meaning, which the PTAB had used, based on the limited meaning used in the specification. Therefore, the court reversed the decision relative to some of the claims and remanded the case to the PTAB for further consideration in view of the corrected BRI.
if the interpretation is simply the broadest possible meaning, divorced from how the term is used in the specification and claims, then this is quite possibly not a reasonable interpretation.
Perhaps the most important takeaway from this pair of decisions is the court’s reminder that a proper BRI must be supported by the specification and claims. If a broad interpretation is supported by the full disclosure, including not only examples, but also term usage and differentiation in the description and the claims, then it is likely a reasonably broad interpretation in light of the specification and the claims. However, if the interpretation is simply the broadest possible meaning, divorced from how the term is used in the specification and claims, then this is quite possibly not a reasonable interpretation.
These decisions highlight yet another benefit of the AIA post-grant proceedings: namely, more Federal Circuit review of PTAB and, by extension, USPTO claim construction practices. Due to the nature of ex parte examination proceedings, issues relative to the USPTO’s application of the BRI standard are not frequently reviewed by the Federal Circuit, and applicants have been struggling for years with what is often applied simply as the broadest possible interpretation rather than the broadest reasonable interpretation in light of the claims and specification. Hopefully, these decisions – and the numerous decisions likely yet to come in AIA post grant proceedings relative to this issue – will help not only patent owners at the PTAB, but also patent applicants to more effectively work with examiners to find reasonable interpretations of claim terms.