Specification Crucial in Proper BRI Analysis

It is well established that the USPTO applies a broadest reasonable claim interpretation to patent applications and patents subject to post issuance proceedings. The abbreviation “BRI” is often used as a short hand reference to the full claim interpretation standard, which is the broadest reasonable interpretation in light of the specification, from the perspective of one skilled in the relevant art. (MPEP 2111)

Unfortunately, the shorthand notation “BRI” is often mistaken as the standard. That is to say, the proper test is not simply a “broadest reasonable interpretation” of claims in a linguistic sense. Rather, the broadest reasonable interpretation of the claims that is consistent with the specification of the subject application or patent. While it is true that limitations from a patent specification may not be imported to the claims, the USPTO often times confuses this prohibition with the required consideration of the specification in a proper BRI analysis.

In 2010, the CAFC cautioned the USPTO on reading claims independent of a patent specification during patent reexamination in In re Suitco Surface (CAFC 2010). Earlier this week, the agency was reversed again, due to the guidance of the patent specification in In re Abbott Diabetes Care Inc. (here)

In Abbott, the parties’ primary dispute centered on whether the broadest reasonable construction of “electrochemical sensor” would embrace a sensor including external cables and wires connecting the sensor to its control unit. The USPTO found that the BRI included such wired sensors, the CAFC reversed, explaining:

We agree with Abbott that the Board’s construction of “electrochemical sensor” is unreasonable and inconsistent with the language of the claims and the specification.   .  .

Here, the specification contains only disparaging remarks with respect to the external cables and wires of the prior-art sensors . . .In fact, the primary purpose of the invention was to provide “a small, compact device that can operate the sensor and provide signals to an analyzer without substantially restricting the movements and activities of the patient.”   . . .

Even more to the point, every embodiment disclosed in the specification shows an electrochemical sensor without external cables or wires.  Indeed, the only mention of a sensor with external cables or wires in Abbott’s patents is a single statement addressing the primary deficiency of the prior art.

(emphasis added)