PTAB Trial Basics To Be Reviewed By High Court
Earlier this month the Supreme Court granted certiorari in Cuozzo Speed v. Lee. The Cuozzo appeal involves the very first Inter Partes Review (IPR) ever filed with the USPTO’s Patent Trial & Appeal Board (PTAB). Throughout the IPR and CAFC appeals, patentee Cuozzo has maintained that the broadest reasonable claim interpretation (BRI) employed by the PTAB is improper, and that the PTAB’s decision to institute trial should be reviewable on appeal. The Federal Circuit disagreed on both issues, but sitting en banc was sharply divided.
In its petition for certiorari Cuozzo presented two issues for review to the Supreme Court, now accepted:
1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
The grant of certiorari in many Federal Circuit cases has led to reversal. As such, many are viewing the high court’s interest in Cuozzo as an indication that the use of BRI in PTAB proceedings will be short-lived. Unlikely.
Yet, is it accurate to characterize BRI as somehow eschewing plain and ordinary meaning? Of course not.
In fact, the MPEP explicitly instructs examiners and PTAB judges to consider plain and ordinary meaning, directly quoting Philips.
From MPEP 2111:
I.THE WORDS OF A CLAIM MUST BE GIVEN THEIR “PLAIN MEANING” UNLESS SUCH MEANING IS INCONSISTENT WITH THE SPECIFICATIONUnder a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. . . . . .
III.“PLAIN MEANING” REFERS TO THE ORDINARY AND CUSTOMARY MEANING GIVEN TO THE TERM BY THOSE OF ORDINARY SKILL IN THE ART “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp.,415 F.3d 1303, 1313, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005) (en banc); Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302, 67 USPQ2d 1438, 1441 (Fed. Cir. 2003); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 67 USPQ2d 1132, 1136 (Fed. Cir. 2003) (“In the absence of an express intent to impart a novel meaning to the claim terms, the words are presumed to take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art.”).
While the MPEP does not have the force and weight of the law, it does make abundantly clear that the plain and ordinary meaning is part and parcel of a proper BRI analysis. A plain and ordinary meaning that is unreasonable in view of the intrinsic record should be declined whether in the PTAB or the district court. Indeed, the agency explained exactly that in the final rule package for IPR, namely:
During a proceeding, a claim of an unexpired patent will be given its broadest reasonable construction in light of the specification of the patent in which it appears. See, e.g., § 42.100(c).This means that the words of the claim will be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). In the absence of a special definition in the specification, a claim term is presumed to take on its ordinary and customary meaning, a meaning that the term would have to a person of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, petitioners are not required to define every claim term, but rather merely provide a statement that the claim terms are presumed to take on their ordinary and customary meaning, and point out any claim term that has a special meaning and the definition in the specification.
77 Fed. Reg. 48700 (Aug. 14, 2012).
So, what really is the difference between BRI and Philips? It certainly is not the absence of an assessment of “plain and ordinary” meaning.
Setting aside the that BRI proclaims it is the “broadest” interpretation….it is not unreasonably so. The term “broadest” cannot be decoupled from “reasonable” in a BRI analysis. Is Philips then, the most reasonable construction that still allows for a claim to be held valid (i.e., broad but not so broad)? Most proponents of using Philips at the PTAB seem to think so, but this is also plainly incorrect. Philips explains that in rare circumstances it is appropriate to select a construction that favors validity where two constructions are equally plausible, and a strong inference can be shown “that the PTO would have recognized that one claim interpretation would render the claim invalid, and that the PTO would not have issued the patent assuming that to be the proper construction of the term.” Even in such rare cases, the PTO does not apply any presumption of validity, or deference to earlier work—nor should it.
There is virtually no difference between a proper BRI analysis and a proper Philips analysis. The difference, as I have pointed out before is the technical decision makers. Whether applying BRI or Philips, the outcomes are unlikely to change in any meaningful regard when done properly. Much like the recent appeal in Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238 (2011), my expectation is that the high court clarifies and endorses the lower court ruling, at least as to claim construction. In other words, I expect the Cuozzo decision to comment on the appropriate reach of BRI, concluding that it encompasses the plain and ordinary meaning as already applied in practice (albeit not as written law in the MPEP or rule comments).
As to the second question posed, this is where we may see some change to PTAB practice. Judge Newman is of the opinion that the bar is meant for interlocutory appeal, which makes sense given the 12 month trial schedule. As to an absolute appeal bar, the high court may look for more evidence of that intent, which is nowhere found in the legislative history. The statute simply tracked the old reexamination bar to challenging the threshold showing (SNQ). Adopting that language for the AIA has swept in a host of other issues that were never contemplated at the time of drafting the patent reexamination statutes, such as the 315(b) bar and real-party-in-interest considerations. My expectation is that the appeal bar will be softened to limit only interlocutory review of institution decisions.