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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

USPTO to Apply BRI Claim Standard in Post Grant Proceedings

Posted On: Jun. 21, 2012   By: Scott A. McKeown
BRI_standardUSPTO Clarifies Stance on BRI Application to Post Grant Proceedings

During yesterday’s hearing of the Senate Judiciary Committee, Director Kappos explained the various initiatives ongoing at the USPTO with respect to AIA implementation, efforts to address drafting errors in the AIA, and backlog reduction efforts.

Toward the end of the hearing, Director Kappos was asked to justify the use of the broadest reasonable interpretation (BRI) in the new post grant proceedings. This same comment was earlier submitted to the USPTO by the major bar associations (for reasoning that has long escaped me). Director Kappos explained that the AIA requires the USPTO to assess patentability, not validity. In this way, the Agency is simply following the mandate of the legislation. 

Shortly thereafter, the Director issued an expanded rationale on his blog. The Director correctly explained that:

. . . .[P]atent claims serve an important public notice function. An essential purpose of the broadest reasonable claim interpretation standard in the amendment process is to encourage an inventor to fashion clear, unambiguous claims. Patent owners in inter partes and post grant reviews will be afforded opportunities to amend their claims commensurate with their contribution to the art. Only through the use of the broadest reasonable claim interpretation standard can the Office ensure that uncertainties of claim scope are removed by the inventor. In contrast, patents before a district court are presumed valid with a heightened “clear and convincing” standard of proof to demonstrate invalidity. Consistent with this heightened presumption of validity—and as there is no opportunity to amend and resolve ambiguities—district courts construe claims to uphold validity. The Office however, is not so limited in its approach to claim interpretation, given its authority to amend patent claims.

Some have expressed a concern that applying the broadest reasonable interpretation standard tointer partes and post grant reviews could lead to double standards between ongoing patent litigation and the Office’s reviews. The AIA however, addresses this concern. Specifically, the AIA imposes limitations on a petitioner’s ability to file a review when there is ongoing district court litigation, while providing time limits for the Office to complete its reviews. By placing limits on the filing and completion of the reviews, and encouraging coordination between the Office and district courts, the AIA provides improved mechanisms to avoid conflicts. 

On the other hand, inconsistent results would become a major issue if the Office adopted a standard of claim construction other than the broadest reasonable interpretation for post-grant reviews. Specifically, the AIA contemplates that there will be multiple proceedings in the Office, and thus requires the Office to establish rules concerning the relationships between the various proceedings. For example, there may be an inter partes review of a patent that is also subject to an ex parte reexamination, where the patent is part of a family of co-pending applications all employing the same claim terminology. Major difficulties would arise where the Office is handling multiple proceedings with different claim construction standards applicable. In this world, the same amendment made in an inter partes review and a pending application could result in an allowance in one case and a rejection in the other. Or, the introduction of narrower language in a pending application and broader language in an inter partesreview could result in an allowance of the broader language and a rejection of the narrower language. Clearly, these examples and many others would produce bizarre results, unhelpful to patentees, applicants, the public, and the system.

To avoid the potential of having distinct alternative claim constructions for a claim term arising in the various proceedings before the Office and the inconsistent results flowing therefrom, the Office has chosen to continue to employ a single standard, the broadest reasonable interpretation standard, for proceedings before the Office. Continued use of the broadest reasonable claim interpretation will ensure the Office serves the patent community and makes full use of its resources in processing patent claims efficiently, effectively and consistently.

While we await the final rules packages for the PTAB proceedings, it is clear that the long standing use of BRI by the USPTO will not change.

Also of interest during the hearing, Senator Coburn made clear that any change to the estoppel of PGR would not qualify as a “technical ” change, but require full debate of all stakeholders. Other non-technical changes considered are in the areas of prior user rights and the definition of prior art under some of the revised 102 sections.

5 Responses to “USPTO to Apply BRI Claim Standard in Post Grant Proceedings”

  1. Anonymous says:

    It seems to me that:

    1. the BRI rubric was created or solidified in Zletz (1989), Yamamoto (1984), and Burlington Indus. (1987). See In re Morris (1997) at 1054.

    2. Thus, the BRI rubric was created roughly around 1987.

    3. Thus, the BRI rubric was created well before the continued examination and patent term adjustment provisions of the American Inventors Protection Act of 1999. These provisions create huge costs when applicants amend the claims – basically type B PTA is cut off and the patent term starts shrinking.

    4. Thus, the BRI rubric was created well before the 1999 (CAFC) and 2002 (Sup.Ct.) Festo decisions. These decisions created huge costs when inventors amend the claims.

    5. Although less clear, the BRI rubric also appears to have been created just before the CAFC began applying prosecution history disclaimer more rigorously.

    6. In sum, BRI is based on the premise that applicants can liberally amend the claims. Long after the BRI rule was created, Congress and the courts created huge costs for applicants to amend the claims. Thus, the premise of BRI has lost much of its justification, but it lives on.

    7. Judge Newman has stated that the BRI rubric is just an expedient and “not a rule of claim construction.” But everyone, including esp. the Patent Office, appears to apply it as a rule of claim construction.

    8. Postgrant proceedings just aggravate the problems outlined above. In addition to the RCE and PTA concerns of original prosecution, as well as the disclaimer/estoppel concerns of both original pros and reexamination, reexamination also imposes further limitations on claim amendments. There are generally no RCEs during reexam, and the amendments must be directed to the rejections (etc.). These additional constraints further undermine the premise behind the BRI rubric that applicants can liberally amend the claims.

    9. In view of 8, In re Etter was at least partially decided wrongly.

    10. The PTO’s approach to the new AIA provisions exacerbate the problem further. These new proceedings are adversarial – meaning more dangerous to the patentee – and they place similar draconian constraints on the applicant’s ability to amend the claims. Like the AIPA of 1999 and the Festo decisions, the AIA was enacted long after the BRI rubric was created, and the AIA creates proceedings that undermine the liberal-amendment-premise of that rubric.

    11. Kappos says that the applicant cannot amend the claims in litigation. This is technically true, but misleading: the applicant cannot amend the claims in the same litigation forum, but can always file for a reexamination, reissue, or (under AIA) supplemental examination. Moreover, the ability of applicants to amend in postgrant proceedings is worthless, because amendments generally create intervening rights and lots of other problems. The distinction is not nearly as great as Kappos suggests.

    In conclusion: the BRI rubric was created at a time would applicants could liberally amend claims without giving up patent term, without giving up the doctrine of equivalents, and could amend the claims as much as they like. None of that is true any more, and it becomes less true year after year (the AIA being the latest example). Given these further developments, the harsh anti-patentee effect of the BRI rule (at least for prior art rejections) no longer makes sense.

    In fact, the BRI rule never made much sense, because it results in an intrinsic record that is made according to a completely different standard of claim construction. What the applicant thought the BRI was, what the examiner or BPAI thought the BRI was… none of that has any necessary relevance to what the Phillips-style construction is. The result is just vagueness, ambiguity, and inconsistency – which is poisonous to the notice-function that Kappos seems to think the BRI serves. The BRI does not help the notice function, it helps destroy it.

  2. Paul F. Morgan says:

    Re the above comment, Dave Kappos provides a good defense in his PTO blog yesterday of why keeping a “broadest reasonable” claim interpretation for reexaminations still makes the best sense for the PTO. Obviously that was in response to all the comments like the above from trial lawyers who have been trying to get by post-grant proceedings rulemaking what they failed to get in the AIA itself. Namely to import into PTO proceedings the kind of ambiguous variable “nose of wax” claim scope interpretations that patent litigators regularly use to dodge 102’s but argue for infringement which patent owners get to argue in D.C. Markman’s and then again at CAFC panels in their patent litigation. Thereby also importing into PTO proceedings the ambiguity from the clear split of authority between different members of the Fed. Cir. in their inconsistent panel decisions as to how much of the specification to “read into” the claims being reexamined.

  3. I would agree that a true BRI analysis is less than ideal when it comes to the practicalities of post grant practice (i.e., intervening rights). For example, to the extent the earlier applicant altered claims scope through disclaimer, such should not be ignored therafter to revisit the same issue in the name of BRI. That being said, I have faith that the experience of the PTAB will be quite helpful in arriving at a fair read of the claims.
    Moreover, with the addition of limited discovery, heightened thresholds, and the ability to settle, patentees are far better off post-AIA than in the previous reexamination system.

    Also, I agree with Paul wholeheartedly that if the USPTO were to follow district court practices, we would be left with an alternative that is either too costly or complex to be of any value…..perhaps that is what the plaintiff bar is seeking.

  4. Anonymous says:

    Paul, I wrote the first comment here. I’m not a litigator, I’m a prosecutor. I don’t know about your experience, but in my experience, the PTO’s application of the BRI rubric is just as ambiguous and inconsistent as the different CAFC judge’s application of Phillips. Panel dependency is not limited to litigation, just compare how Newman and Rader apply BRInterpretation versus Dyk and Prost.

    So I disagree with both you and Scott that having the PTO apply Phillips would be more costly. It simply shifts the line in the sand toward generally narrower claims. People will still fight just as hard over where the line is, whether it is a BRI line, or a Phillips line. Etc.

    But Scott knows way more about this than I do, so I reserve the right to change my mind.

  5. Paul F. Morgan says:

    Re “intervening rights,” it is the same for reissues as it is for old and new reeexaminations. It is not a problem unless one delays fixing one’s claims until AFTER others have completed their efforts and investments and overcome risks to develop, manufacture, and market their products for the benefit of the public. The rationale for intervening rights is that companies should have the right not to have their business progress impeded by clearly invalid claims even in the [unusual] event that they could even be aware of a patent with such invalid claims that might somehow be sufficiently amended in post grant proceedings to become valid. Also, not to have such years-later “rescued from the grave” patent claims become a retroactive basis for retroactive infringement damages.
    I fully appreciate that many companies are now unwilling to pay for quality patent preparation or prosecution, often doing so as cheaply as possible without any prior art investigation, yet expect trial lawyers to somehow repair or salvage such claims much later if they are asserted. But that is not conduct that should be rewarded by extending it into post-grant PTO proceedings.