The PTAB’s recent decision on remand in Corning Optical Comm. v. PPC Broadband (IPR2013-00342, Paper No. 57), and the related decision on appeal (815 F.3d 747 (Fed. Cir. 2016)), serve as a reminder that the broadest reasonable interpretation (BRI) standard does not permit an unreasonably broad construction.
In addition, the PTAB’s related order (see Paper 55), denying the parties’ requests for further briefing on remand, indicates that, when the Federal Circuit bases its claim construction on a party’s construction advanced during an earlier proceeding before the PTAB, the PTAB may choose to base its remand decision on the arguments and evidence in the record, without need for further briefing.
Requests for Further Briefing on Remand Denied
Prior to its remand decision, the PTAB issued an order (see Paper 51) allowing each party to file a paper outlining its position as to what matters “must be” reconsidered or reassessed on remand, and to determine whether additional briefing or submission of new evidence was needed. Both parties requested additional briefing (see Papers 53, 54) regarding whether the challenged claims were patentable in light of the Federal Circuit’s claim construction for the term “reside around.” In addition, the patent owner requested permission to present, for the first time, arguments and evidence demonstrating that the petitioner had failed to identify all real parties-in-interest as required by 35 U.S.C. § 312(a)(2). According to the patent owner, evidence regarding the real-parties-in-interest “was only discovered after the Final Written Decision.”
The PTAB denied the parties’ requests for additional briefing, determining that its remand decision would be based on the arguments and evidence of record prior to appeal because the Federal Circuit’s construction for the term “reside around” was “based on the construction urged by Patent Owner during the proceeding before the Board.” Paper 55, n.3. Accordingly, “[b]oth parties already had reasonable opportunity to be heard in that regard.” Id. The PTAB also stated “that neither party indicated that further briefing regarding the patentability issue must be submitted and considered” (Paper 57 at 4)—although this seems to be inconsistent with the positions expressed by the parties.
The PTAB also denied the patent owner’s request to submit new arguments and evidence regarding real-parties-in-interest, stating: “Given that the 2014 [Final Written Decision] was vacated only because of an error in claim construction, we need, on remand, to correct the error as determined by our reviewing Court. Nothing more is required.” Id. at 3. According to the PTAB, “Patent Owner did not raise [the new issue] before the Federal Circuit while the case was on appeal, and has not sufficiently explained … why we should consider the new issue now at this late stage.” Paper 55 at 3.
Decision on Remand regarding Patentability
On appeal the Federal Circuit determined that the PTAB had improperly construed “reside around” to broadly mean “in the immediate vicinity of; near.” As described in its remand decision, the PTAB had based its broad construction on two underlying reasons. First, because the term “reside around” does not expressly appear in the specification, the PTAB determined that its construction “turned on the competing dictionary definitions of this claim term provided by the parties.” IPR2013-00342, Paper No. 57 at 7. Second, the PTAB relied on the claim construction canon that different claim terms should generally be given different meanings, to determine that the use of the word “surrounded” in the preamble “strongly suggest[ed]” that the term “reside around” in the body meant something different from, and therefore precluded, the more narrow construction “encircle or surround,” i.e., the construction advocated by the patentee and later adopted by the Federal Circuit on appeal. Id. at 57 at 7-8 (emphasis added).
In its decision vacating the PTAB’s decision, however, the Federal Circuit explained that when a claim preamble is not limiting, then the claim construction cannon that presumes different meanings for different terms has less applicability:
When the preamble has [its] general purpose, and is not being used as a claim limitation itself, the construction canon which presumes that different terms should be given different meanings has less applicability.
Corning Optical, 815 F.3d at 753. In addition, the Federal Circuit determined that, even though the claim term “reside around” was not expressly found in the specification, the construction “encircle or surround” was supported—particularly, by specific embodiments, the ones “where the [claim 10] continuity member encircles or surrounds the body in a ‘sleeve-like configuration.’” Corning Optical, 815 F.3d at 755. The fact that the “encircle or surround” construction covered only specific embodiments—and, therefore, not every disclosed embodiment—did not preclude the narrower “encircle or surround” construction under the BRI standard because the patentee’s use of the term “around” in the claim clearly referred to particular embodiments:
[T]he broadest reasonable construction is [not] always the one which covers the most embodiments. … While there will be some embodiments that do not fall within the broadest reasonable construction of [independent] claim 10, it is clear based on the patentee’s use of “around” in the specification to refer to components that encircle or surround that the broadest reasonable interpretation is limited to this use of the term.
Corning Optical, 815 F.3d at 755. As noted by the Federal Circuit, “[a]bove all, the broadest reasonable interpretation must be reasonable in light of the claims and specification,” and “[t]he fact that one construction may cover more embodiments than another does not categorically render that construction reasonable.” (emphasis added).
In its remand decision, applying the Federal Circuit’s narrower “reside around” construction, the PTAB determined that under the proper BRI construction the petitioner had failed to demonstrate that the challenged claims were unpatentable. See IPR2013-00342, Paper No. 57 at 21-22.
For practitioners, Corning serves as a reminder that, even under the broadest reasonable interpretation standard, claim terms must be reasonable in light of both the claims and the specification—even where the term does not expressly appear in the specification, and even where a narrower construction would not cover all disclosed embodiments.