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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.

Prosecution History Before the PTAB….Your Mileage May Vary

Posted On: Feb. 18, 2014   By: Scott A. McKeown
Prosecution-historyThe Applicability of Prosecution History in a BRI Analysis

Whether in a new patent application or in an issued patent being subject to a post grant review proceeding, the USPTO utilizes a Broadest Reasonable Interpretation (BRI) standard for all patent claims. Under this one-size-fits-all standard a patent claim is construed consistent with the accompanying patent specification from the perspective of one skilled in the relevant art.

Although applied in post grant proceedings, BRI was developed as an examination expedient for patent examiners to protect the public notice function of newly minted patent claims. That is, since no property rights exist at the time of patent application, a pure BRI analysis properly ignores the developing intrinsic record as a guide to claim meaning (i.e., prosecution history) in favor of claim amendment practices. However, once an issued patent returns to the USPTO for a post grant analysis, consideration of prosecution history as intrinsic evidence is more of a mixed bag—especially when before examiners steeped in traditional BRI practices (e.g., reexamination, reissue, supplemental examination).

Recently, the Court of Appeals for the Federal Circuit (CAFC) has sent the USPTO Patent Trial & Appeal Board (PTAB) seemingly conflicting messages on the use of prosecution history during post grant proceedings.

Last week in Tempo Lighting Inc.,v. Tivoli LLC. (here) the Court agreed with the PTAB’s claim construction of a patent claim in inter partes reexamination. In affirming the construction, the court pointed out the consistency of the Board’s determination with that of the original (i.e., application history) patent prosecution history, noting:

In claim construction, this court gives primacy to the language of the claims, followed by the specification. Additionally, the prosecution history, while not literally within the patent document, serves as intrinsic evidence for purposes of claim construction. This remains true in construing patent claims before the PTO. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Here, the prosecution history shows that [patentee] meant for material that is [claim term]. . . This intrinsic evidence support the Board’s decision.

Contrast this statement on the use of prosecution history with that of Marine Polymer (also a patent reexamination case):

If, in reexamination, an examiner determines that particular claims are invalid and need amendment to be allowable, one would expect an examiner to require amendment rather than accept argument alone.  . .

In Marine Polymer, the Court was sensitized to the potential abuses of prosecution history as a tool to avoid intervening rights in a post grant proceeding. As a result, one might reconcile the statements of these two cases as distinguishing between types of prosecution history. That is, consideration of closed record prosecution history (i.e., original application prosecution) is generally more reliable as to claim meaning when compared to open and ongoing records (i.e., reexamination, reissue, supplemental examination). So, once a patent proceeding is concluded and the patent issued, confirmed, or reissued, the history is closed and the public relies on that history.

Once a patent exits a USPTO proceeding there is often times some form of disclaimer/estoppel made in the concluded record. It would be manifestly unjust to ignore the terms of that previously negotiated bargain in a subsequent post grant proceeding. Yet, such concessions are routinely sought in may post grant proceedings under a strict BRI analysis.

Use of prosecution history in post grant proceedings should be limited to reviewing the deal made between the patentee and the office while excluding the self serving and carefully crafted statements of open, post grant records.

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