Patents Post Grant Blog

DOES THE ORIGINAL PROSECUTION HISTORY FACTOR INTO A BROADEST REASONABLE INTERPRETATION ANALYSIS?

It is well established that a broadest reasonable interpretation (BRI) claim analysis is applied in both the prosecution of patent applications as well as in patent reexamination proceedings.  In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).  The justification for the application of the BRI standard in patent reexamination is that much like original application prosecution, the claims at issue in reexamination may be amended. Yet, the application of a strict BRI analysis to previously issued claims in patent reexamination, in many circumstances, deprives Patentees of the benefit of their original bargain with the USPTO.

By disregarding a clear disclaimer in claim scope of the original prosecution in a subsequent patent reexamination, history is effectively rewritten. In other words, an expansion of claim scope to the point of embracing disclaimed subject matter is not possible in district court since prosecution history estoppel absolutely forecloses such an interpretation. Yet, by following the explicit requirement of the BRI of MPEP 2111 original prosecution history need not be considered. Such a limited analysis in patent reexamination expands the issued claim scope to embrace surrendered subject matter (i.e., beyond that which was originally bargained); in doing so, the Office unwittingly compromises the property rights of the Patentee.  Certainly, while it is true that claims can be amended by the Patentee to explicitly exclude subject matter disclaimed previously by argument only, such an amendment of issued claims may create intervening rights, potentially surrendering significant property rights for past infringement.

It is for this reason that a strict BRI standard such as used in original prosecution is incongruous in analyzing previously issued claims in patent reexamination. Instead, the BRI standard for patent reexamination should be re-calibrated to the “broadest reasonable interpretation consistent with the intrinsic record.” Read the rest of this entry »