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CAFC Reversal Cites Patent Reexamination Claim Interpretation

Posted On: Jan. 12, 2011   By: Scott A. McKeown
limitsBroadest Reasonable Interpretation (BRI) an Outer Limit?

In a district court (or the ITC) patent claims are interpreted based upon the presumption of validity accorded issued patents as guided by controlling claim construction precedent.  Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). On the other hand, claims in patent reexamination are accorded a broadest reasonable interpretation consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).

Relative to the courts, the differing interests and standards of the USPTO often times result in disparate claim interpretation findings. Still, many Patentees are quite surprised to find themselves embroiled in a patent reexamination proceeding in which seemingly settled issues of claim construction are revisited at the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007).

In the typical case of parallel proceedings, Patentees seek to maintain the narrower claim construction of the court to avoid validity challenges posed in patent reexamination. On the other hand, the USPTO will advance a broadest reasonable interpretation of claim terminology. Because of these differences, the PTO will not adopt court constructions, and courts tend to disregard PTO interpretations.

However, when a Patentee seeks to argue a construction that is broader than the PTO’s construction for infringement purposes, the CAFC has recently held that the USPTO’s BRI construction is quite instructive.

This past Monday, in St. Clair Intellectual Property Consultants, Inc. v. Canon Inc., (Fed. Cir. 2011, non-precedential), the CAFC reversed a lower court claim construction, based in part, on a BRI of claims in patent reexamination. At issue in the case was the claim language plurality of different data formats for different types of computer apparatus.

The plaintiff argued that apparatus embraced application programs, not just a hardware platform. The defendant argued that the claim was limited to different hardware platforms. After citing to aspects of the patent specification and prosecution history that appeared to support the defendant’s position, the CAFC added:

[Defendant’s] construction is also supported by remarks made by the examiner during reexamination. . .

During reexamination, five different examiners, including three different Supervisory Patent Examiners, rejected the [plaintiff’s] interpretation of the claim language. In addition to concluding that claims 16 and 17 of the ’459 patent and claim 10 of the ’219 patent were limited to different data formats for different types of computer architecture, the examiners, rejecting the [plaintiff’s] construction, concluded that the “computer architecture” construction also applied to the ’010 and ’899 patents . . .

Because an examiner in reexamination can be considered one of ordinary skill in the art, his construction of the asserted claims carries significant weight. (emphasis added)

At first blush it seems odd that the CAFC would adopt a claim interpretation based on the different patent reexamination claim interpretation standard. Yet, the Patentee was advocating a broader interpretation than that found under the BRI standard. Thus, in addition to doing their own analysis as to the lack of support in the specification and prosecution history, the CAFC cited to the patent reexamination as evidence of a similar finding. In this case one could argue that the analysis was in fact the same…namely, how broad can the claims be interpreted?

As to the “significant weight” statement above, it will be interesting to see whether or not such a position will be adopted outside of the unique context above. Indeed, it does not even appear that the USPTO follows this line of thinking.

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