Claim Interpretation

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Unreasonable to Extend Claim Scope to Described Prior ArtPerhaps mindful of the last patent reexamination appeal that related to flooring technology, yesterday the BPAI reversed an Examiner claim construction as unreasonable. As a reminder, claims in patent reexamination are accorded a broadest reasonable interpretation (BRI) consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).Since the Suitco decision, (linked above), the Office has been making more of an effort to ensure that claims are not broadened to a point of inconsistency with the specification. There is a delicate balance between incorporating limitations from the specification to the claims, and reading claims consistent with the specification. Yesterday’s decision, illustrates one helpful constraint on BRI, namely, clear disavowal of the patent specification.The decision, ex parte Jorgen J. Muller Jr., (here) revolved around an injection molded floor panel. Specifically, the claims were directed to structure of the panel that helped eliminate undesirable “sink marks” of the tile that otherwise form when the tiles are curing. In this regard, the claims recited an area defined by each of the one or more structures is contained within and positioned directly above an area defined by the one or more support members.A figure of the patent is reproduced below showing the area defined by the support members.The area defined by the upper structures 220 are entirely contained within, and aligned with, an area defined by the lower support members 215 and 217.Yet, the Examiner interpreted the limitation, “an area” of the structure is “contained within” an area defined by the support member, as requiring that only a part of the structure be contained within the support member. Thus, the Examiner interpreted the claim to permit the top structures to extend outside the area of the bottom support members.The Board noted that the Examiner interpretation was inconsistent with the specification, and therfore, unreasonable as clearly embracing the prior art discussed in the specification of the patent. The prior art discussed as suffering from the “sink mark” problem was illustrated in the patent as Fig. 3B below.The Board noted that, with regard to Fig. 3B:[T]he Examiner’s interpretation of the disputed limitation corresponds to the configuration of the prior art tile depicted in Figure 3. This configuration is discussed above as resulting in sink marks. It is not reasonable to read the claims as reading on a prior art configuration which was expressly addressed and remedied by the ‘592 patent.The Board then continued to explain that one of skill in the art would understand the claimed area to be within the vertical alignment of the structures and support members.There are few bright lines in interpreting claims under the BRI standard. However, one seems to be that any interpreation embracing disavowed claim scope of a patent specification is unreasonab

Perhaps mindful of the last patent reexamination appeal that related to flooring technology, yesterday the BPAI reversed an Examiner claim construction as unreasonable. As a reminder, claims in patent reexamination are accorded a broadest reasonable interpretation (BRI) consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).

Since the Suitco decision, (linked above), the Office has been making more of an effort to ensure that claims are not broadened to a point of inconsistency with the specification. There is a delicate balance between incorporating limitations from the specification to the claims, and reading claims consistent with the specification. Yesterday’s decision, illustrates one helpful constraint on BRI, namely, clear disavowal of the patent specification.
Continue Reading Specification Disavowal Limits Claim Scope in Patent Reexamination

Broadest Reasonable Interpretation (BRI) an Outer Limit?

In a district court (or the ITC) patent claims are interpreted based upon the presumption of validity accorded issued patents as guided by controlling claim construction precedent.  Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). On the other hand, claims in patent reexamination are accorded a broadest reasonable interpretation consistent with the specification, from the perspective of one of skill in the art. In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).

Relative to the courts, the differing interests and standards of the USPTO often times result in disparate claim interpretation findings. Still, many Patentees are quite surprised to find themselves embroiled in a patent reexamination proceeding in which seemingly settled issues of claim construction are revisited at the USPTO. In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007).

In the typical case of parallel proceedings, Patentees seek to maintain the narrower claim construction of the court to avoid validity challenges posed in patent reexamination. On the other hand, the USPTO will advance a broadest reasonable interpretation of claim terminology. Because of these differences, the PTO will not adopt court constructions, and courts tend to disregard PTO interpretations.

However, when a Patentee seeks to argue a construction that is broader than the PTO’s construction for infringement purposes, the CAFC has recently held that the USPTO’s BRI construction is quite instructive.…

Continue Reading CAFC Reversal Cites Patent Reexamination Claim Interpretation

Cancellation of Dependent Claim Deemed “Amendment in Effect”If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense (35 USC § 252) Of course, the conclusion as to whether or not a claim change in patent reexamination/reissue will result in the an intervening rights defense is far from a straightforward determination.As demonstrated recently, even where an amendment is made to overcome a prior art rejection, such a changed claim can still be considered substantially identical to the previously issued claim. Courts have consistently held that it is not the verbiage of a claim that must be substantially identical. Instead, courts look to the difference between originally issued claim scope relative to the scope of claims exiting patent reissue and/or patent reexamination. Adding another layer of complexity to this calculus is the recent case of University of Virginia Patent Foundation v. General Electric Company.  In University of Virginia (here) an independent claim was considered to be “amended in effect” based upon the cancellation of a dependent claim. In arriving at this conclusion, the court explained “[a]lthough no formal amendment was made to Claim 1, it was amended in effect when Claim 4 was canceled and the scope of Claim 1 changed.” At issue in University of Virginia is a patent relating to magnetic resonance imaging (MRI). In explaining how claim 1 could be “amended in effect,” the court reasoned:[T]he Patent Foundation filed an Amendment under 37 C.F.R. § 1.111 and § 1.550 canceling dependent Claim 4 of the patent, which had recited “[t]he method of claim 1, wherein said magnetization recovery period has a time of zero.” The Patent Foundation explained that it canceled the claim “because it does not properly depend from claim 1 because a ‘magnetization recovery period [that] has a time of zero’ does not ‘allow[s] [sic] T1 and T2 relaxation before the start of the next sequence cycle,’ as required by the magnetization recovery period of claim 1. Stated simply, a finite period of time must occur for T1 and T2 relaxation to occur, and thus a magnetization recovery period that has a time of zero is inconsistent with claim 1. . . Based on the Patent Foundation’s amendment, the PTO withdrew all of its objections to the claims except for those pertaining to Claim 4, which was canceled, and issued the reexamination certificate on May 4, 2010. In its statement of reasons for patentability, the PTO declared that “the claimed ‘magnetization recovery period’ is interpreted to correspond to a finite period of time (i.e., greater than zero) that allows substantially complete T1 and T2 relaxation to occur—i.e., relaxation to thermal equilibrium of both the longitudinal component and the transverse component—as opposed to partial or substantially incomplete relaxation.”. . . In order to overcome the PTO’s initial rejection of Claim 1 during reexamination, the Patent Foundation voluntarily canceled dependent Claim 4, the terms of which provided for a magnetization recovery period of time zero. I held above that prior to the cancellation of Claim 4, the magnetization recovery period in Claim 1 included the option of a period of time zero. After the cancellation, it is undisputed by the parties that the recovery period in Claim 1 does not include the option of a period of time zero. Thus, the amendment effected a change in meaning in Claim 1. Although no formal amendment was made to Claim 1, it was amended in effect when Claim 4 was canceled and the scope of Claim 1 changed.Critics of ex parte patent reexamination will often point to the roughly 25% of  cases in which all claims are confirmed. Yet, as previously pointed out, additional disclaimer and prosecution history of a patent reexamination concurrent to litigation can have a significant impact on litigation claim construction. Thus, these statistics do not tell the full story as significant victories may be achieved with respect to improved claim construction positions.Likewise, even where seemingly inconsequential claim changes are made, wiping out up to six years of infringement damages is a significant victory. Going forward, in view of cases such as University of Virginia, prosecution history disclaimers may be increasingly leveraged as “amendments in effect” for the purpose of asserting an intervening rights defen

If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense (35 USC § 252) Of course, the conclusion as to whether or not a claim change in patent reexamination/reissue will result in the an intervening rights defense is far from a straightforward determination.

As demonstrated recently, even where an amendment is made to overcome a prior art rejection, such a changed claim can still be considered substantially identical to the previously issued claim. Courts have consistently held that it is not the verbiage of a claim that must be substantially identical. Instead, courts look to the difference between originally issued claim scope relative to the scope of claims exiting patent reissue and/or patent reexamination. Adding another layer of complexity to this calculus is the recent case of University of Virginia Patent Foundation v. General Electric Company.  In University of Virginia (here) an independent claim was considered to be “amended in effect” based upon the cancellation of a dependent claim.
Continue Reading Intervening Rights Created by Claim Cancellation in Patent Reexamination

Substantially Identical…More than Meets the Eye!An interesting issue raised by any post grant claim amendment (e.g., patent reissue and/or patent reexamination) is: For a given claim, what is the degree of amendment (i.e., change in scope) that will exceed the “substantially identical” standard of 35 U.S.C. § 252?This threshold determination will determine the availability of past infringement damages for the amended/new claims, or whether a potential infringer may  avoid liability for past damages based on the doctrine of intervening rights. If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense. Clearly, Patentees tend to argue that amended/new claims are substantially identical, while infringers argue that the claims are not substantially identical.Last week, the substantially identical standard of 35 U.S.C. § 252 was analyzed in Aspex Eyewear, Inc., et al., v Marchon Eyewear Inc., et. al., (SDFLA). Interestingly, the court found that claims changed/added in patent reexamination were in fact substantially identical to the previously issued claims.  Ordinarily this would be fantastic news for a Patentee, but for Aspex, it was the end of the road. As explained by the court, Aspex previously sued the defendants (Revolution and Marchon) for infringement of U.S. Reissue Patent RE37,545 (reissue of U.S. Patent 5,568,207). Claim 22 of the ‘545 patent was asserted against both defendants. In 2007, Revolution was found to infringe claims 22, effectively ending the case. Likewise, in 2008, Aspex settled with Marchon, dismissing their claims with prejudice.An unrelated third party requested ex parte patent reexamination of the ‘545 Patent in 2007. During the reexamination, previously re-issued claim 23 was amended and claim 35 was newly added. Upon completion of the reexamination, in 2009, Aspex once again sued Revolution and Marchon for infringement of amended claim 23 and new claim 35.The court found that the new features provided by amended claim 23 and new claims 35 were in fact already implied by the issued claims. Thus, the court determined that the claim changes resulted in a substantially identical claim scope to the previous version of the issued claims. Therefore, the court explained (decision here) that Aspex was barred from re-litigating these new claims against the previous defendants, reasoning:”Identical” does not mean verbatim, but rather means “without substantive change.” Slimfold Mfg. v. Kinkead Indus.810 F.2d 1113, 1115 (Fed. Cir. 1987). “Claims are not interpreted in a vacuum, but are part of and read in light of the specification.” addition of the words “having a horizontal surface” or “magnetic member surfaces” does not substantively change the scope of the original claim 23, but merely makes the claim more definite. .                     .                           .                           .The Revolution California Action was fully adjudicated on the merits. The dismissal release of the Marchon Settlement made clear that the settlement dismissed with prejudice as to any causes of action “any claim which could have been had by and between the Parties arising from or connected with” the Marchon California Action. Plaintiffs argue that it alleged legally separate causes of action in their complaint because claim 23 and claim 35 did not exist at the time the California Actions were being litigated. The reexamination of the ‘545 Patent does not entitle Plaintiffs to circumvent claim preclusion because the amended claims relate back to the original ‘545 Patent reissue date. (emphasis added)Interestingly, claim 23 was rejected as unpatentable in view of certain prior art during the patent reexamination. The claim was then amended to overcome the art of record with the above noted language; this fact was not analyzed by the court. As such, this case may be cited in the future for the proposition that–the amendment of a claim in patent reexamination to avoid the prior art does not necessarily equate to a substantial change in claim sco

An interesting issue raised by any post grant claim amendment (e.g., patent reissue and/or patent reexamination) is: For a given claim, what is the degree of amendment (i.e., change in scope) that will exceed the “substantially identical” standard of 35 U.S.C. § 252?

This threshold determination will determine the availability of past infringement damages for the amended/new claims, or whether a potential infringer may  avoid liability for past damages based on the doctrine of intervening rights. If claims, as amended in a post grant proceeding, are not substantially identical in scope relative to the previously issued claims, potential infringers of the amended claims may be provided with an intervening rights defense. Clearly, Patentees tend to argue that amended/new claims are substantially identical, while infringers argue that the claims are not substantially identical.

Last week, the substantially identical standard of 35 U.S.C. § 252 was analyzed in Aspex Eyewear, Inc., et al., v Marchon Eyewear Inc., et. al., (SDFLA). Interestingly, the court found that claims changed/added in patent reexamination were in fact substantially identical to the previously issued claims.  Ordinarily this would be fantastic news for a Patentee, but for Aspex, it was the end of the road.
Continue Reading Court Labels Claims Transformed in Patent Reexamination Mere Disguise

Hedging against post grant invalidity Would you ever file a patent application without dependent claims?  I wouldn’t….and for obvious reasons. Dependent claims help present more detailed aspects of a claimed invention. In the prosecution context for example, dependent claims present a variation in claim scope to the examiner. Once searched by the patent examiner, in many cases dependent claims are identified as allowable and provide a simple amendment option, often leading to patent issuance. Likewise, once issued as a patent, dependent claims provide more detailed fallback positions that serve as a hedge against an invalidity attack. It is a rare patent indeed that issues without dependent claims.Yet, there exists another form of claim that also provides a narrowed presentation of inventive features that is increasingly avoided in patent applications; the means plus function claim. Many practitioners now advocate the avoidance of such claims, but why?Well, for one, litigators prefer broader, non-mpf claims.  Likewise, mpf claims complicate an infringement case due to their unique claim construction rules. Still others will point to recent case law finding such claims indefinite.  Aristocrat Technologies Australia (ATA) v. International Gaming Technology (IGT) (Fed. Cir. 2008)While these criticisms are valid, lost in the debate is the fact that in many cases such claims are more likely to withstand invalidity challenges, such as during patent reexamination….isn’t that the point in having narrower claims?Surely, with cases such as Aristocrat exhibiting the pitfalls of poorly drafted specifications, drafting an application that will support mpf claims can be challenging.Still, as demonstrated in the Funai appeal discussed yesterday, such claims are more likely to survive a challenge due to their relatively narrow interpretation. While Funai was affirmed on some grounds, the detailed analysis of the mpf claims at issue demonstrates the significant difference in claim construction used for mpf claims. In patent reexamination, the broadest reasonable interpretation (BRI) is not available for these more narrow claims. Instead, features of the specification MUST BE imported to these claims.As 112 issues are not considered in patent reexamination for original claims, the dangers of Aristocrat indefiniteness are non-existent at the USPTO. Likewise, with most patents subject to litigation now being subject to patent reexamination, a hedge against a liberal application of BRI is quite useful.The level of difficulty in drafting a patent application that will support proper mpf claims should not discourage Patentees from including these valuable claims as a hedge against invalidity. As most patents of mid-1990s vintage now demonstrate in patent reexamination, these claims can be the difference between winning and losi

Would you ever file a patent application without dependent claims?  I wouldn’t….and for obvious reasons. Dependent claims help present more detailed aspects of a claimed invention. In the prosecution context for example, dependent claims present a variation in claim scope to the examiner. Once searched by the patent examiner, in many cases dependent claims are identified as allowable and provide a simple amendment option, often leading to patent issuance. Likewise, once issued as a patent, dependent claims provide more detailed fallback positions that serve as a hedge against an invalidity attack. It is a rare patent indeed that issues without dependent claims.

Yet, there exists another form of claim that also provides a narrowed presentation of inventive features that is increasingly avoided in patent applications; the means plus function claim. Many practitioners now advocate the avoidance of such claims, but why?

Well, for one, litigators prefer broader, non-mpf claims.  Likewise, mpf claims complicate an infringement case due to their unique claim construction rules. Still others will point to recent case law finding such claims indefinite.  Aristocrat Technologies Australia (ATA) v. International Gaming Technology (IGT) (Fed. Cir. 2008)

While these criticisms are valid, lost in the debate is the fact that in many cases such claims are more likely to withstand invalidity challenges, such as during patent reexamination….isn’t that the point in having narrower claims?…

Continue Reading The Post Grant Magic of Means Plus Function Claims

c-man-repair

Ideally, patent infringement is proven by analyzing a patent’s claims to the products and/or processes of a single infringer. However, often times, patent claims are written in such a way that there is not a clear case of “direct infringement.” In such cases, a Patentee must rely on indirect or divided infringement theories.

Proving indirect infringement (e.g., inducement) is complicated by the need to prove that the indirect infringer had knowledge of the infringement of others. Likewise, cases such as  Golden Hour Data Systems v. emsCharts and Softtech, demonstrate that joint infringement of patent claims by multiple parties requires a “showing of direction and control.”  As such, claims that are only infringed indirectly, or by multiple parties present a significant hurdles during assertion.

Patentees may attempt to remedy direct infringement problems, prior to assertion, through patent reissue. For example, a broadening reissue (if pursued within two years of issuance) may be used to remove limitations from issued claims such that a case of direct infringement may be more readily proven. Likewise, a narrowing reissue, may be filed to recast claimed features in a more amenable fashion. However, with the pendency of patent reissues spanning years, and even decades in some cases, is the special dispatch accorded patent reexamination a more attractive option to address such infringement issues?
Continue Reading Curing Infringement Issues Through Patent Reexamination?

Did the Patent Holder Miss the Boat on Claim Interpretation?On Tuesday, the BPAI seemingly ended the 10 year saga of Ex Parte Gary E. Rhine affirming the examiner’s rejection of expired U.S. Patent 4,910,652.[1] The reexamination was  initiated in April 2000 on behalf of Casio Computer by the now long defunct law firm of Pennie & Edmonds. At issue in the appeal was the patentability of a combination wristwatch/flashlight. In 2002, the Patent Owner amended claim 1 to require a fixed time delay, arguing that the prior art demonstrated an adjustable time delay. However, the reexamination lagged on for years, and prior to appeal, in 2007, the patent expired. On appeal, the USPTO explained that the amendment was effectively withdrawn upon patent expiration in 2007.In a scathing supplemental brief (here) the Patent Owner pointed out that the reexamination had been pending some 10 years, including some unexplained year long gaps in prosecution, bounced appeal briefs, etc. The Patent Owner argued that in light of this delay, it was “outrageous” that the USPTO would withdraw the amendment.While a 10 year pendency is extreme to say the least, this reexamination was filed in a time before the creation of the Central Reexamination Unit (CRU). This case is one of the few remaining with the general examining corps. Likewise, ex parte reexamination appeal rules have been changed to avoid the rejection of appeal briefs late in the game. While not much comfort to Mr. Rhine, fortunately, the patent reexamination landscape has changed significantly over the years.Nevertheless, of perhaps greater interest is why the Patent Owner would amend the claims in the first place since the winning argument was right under his nose.At issue in the appeal was a single independent claim, claim 1 below (as amended): 1. (As Amended) A time keeping and displaying wrist mountable watch having a flashlight mounted in the case thereof, said flashlight comprising:a power supply for supplying electrical power to said flashlight, said power supply electrically connected to at least one light source, andtime delay means for automatically extinguishing said light source after a fixed time delay following the energization of said light source by the electrical deenergization of said light source.  The Office identified the time delay means as being satisfied by the Mallory reference (Fig. 1 below)PPG Comment: Rather than arguing that the “time delay means” of the claim was required to be interpreted under 35 USC § 112 6th paragraph (i.e., means plus function) and that the circuit structure of the specification was nowhere near an equivalent structure to the mechanical spring/bellows arrangement of Mallory, the Patent Holder instead argued the reference was non-analogous art, and could not be bodily incorporated into a watch. Giving the Patent Holder the benefit of the doubt, perhaps the aversion to 112 6th was litigation inspired. For example, the solenoid/capacitive based circuitry of the patent specification, although described as exemplary, could limit infringement options.While the BPAI cannot be blamed for not making the Patent Holder’ s argument for him, I am left wondering whether a statutorily mandated claim construction can be ignored regardless of the implied “waiver” of such arguments in the brief? As pointed out repeatedly on this blog, the USPTO could save Patent Holders a lot of grief, and conserve Office resources by requiring third party requesters to properly address means-plus-function claims, upfront, in their requests for reexamination.[1] Patent Owner sued Casio Computer in 1998 on this patent Rhine v. Casio Inc., Inc., No. 3:96CV7524 (N.D. Ohio May 12, 1998). After a remand from the CAFC, the case was dismissed in 2005 without prejudice in light of the reexaminati

On Tuesday, the BPAI seemingly ended the 10 year saga of Ex Parte Gary E. Rhine affirming the examiner’s rejection of expired U.S. Patent 4,910,652.[1] The reexamination was  initiated in April 2000 on behalf of Casio Computer by the now long defunct law firm of Pennie & Edmonds. At issue in the appeal was the patentability of a combination wristwatch/flashlight. In 2002, the Patent Owner amended claim 1 to require a fixed time delay, arguing that the prior art demonstrated an adjustable time delay. However, the reexamination lagged on for years, and prior to appeal, in 2007, the patent expired. On appeal, the USPTO explained that the amendment was effectively withdrawn upon patent expiration in 2007.

In a scathing supplemental brief (here) the Patent Owner pointed out that the reexamination had been pending some 10 years, including some unexplained year long gaps in prosecution, bounced appeal briefs, etc. The Patent Owner argued that in light of this delay, it was “outrageous” that the USPTO would withdraw the amendment.

While a 10 year pendency is extreme to say the least, this reexamination was filed in a time before the creation of the Central Reexamination Unit (CRU). This case is one of the few remaining with the general examining corps. Likewise, ex parte reexamination appeal rules have been changed to avoid the rejection of appeal briefs late in the game. While not much comfort to Mr. Rhine, fortunately, the patent reexamination landscape has changed significantly over the years.

Nevertheless, of perhaps greater interest is why the Patent Owner would amend the claims in the first place since the winning argument was right under his nose.
Continue Reading 10 Year Pendency Ends in Defeat for Patent Owner in Ex Parte Reexamination

 

waiveBPAI Affirms Claims of Expired Patent in Ex Parte Reexamination

The rejection of all claims (save 25, which was confirmed) of expired Patent 4,925,294, (hereinafter, “‘294 Patent”) owned by Three-Dimensional Media Group LTD., was affirmed by the BPAI on Monday. In affirming the rejection, at issue in the appeal was the meaning of “3-D” as recited in the claims of the ‘294 Patent.

The Patent Holder took the position that the term “3-D” was to be accorded a special meaning. In this regard, the Patent Holder claimed that at the time of filing the Applicant was being their own lexicographer MPEP 2111.01 (IV). In support of this assertion, the Patent Holder presented declaration evidence from persons skilled in the art that identified the meaning of “3-D,” in the context of the ‘294 Patent, as defining stereoscopic 3-D.

The BPAI rejected the Patent Holder definition and declaration evidence as inconsistent with the specification.

Since the Board found that “3-D” was not limited to only stereoscopic 3-D as advanced by the Patent Holder, the majority refused to provide an explicit plain meaning construction of 3-D. Instead the majority explained that by advancing the special (i.e., Applicant being their own lexicographer) definition, the Patent Holder did not dispute the plain meaning of “3-D”, and had therefore waived any right to dispute plain meaning. (citing Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)). As a result, the claim term “3-D” was defined inferentially, that is to say the term was identified as being broader than the Patent Holder’s asserted definition, thus met by the art of record.

Yet, can such a fundamental exercise as a plain meaning claim construction be waived, especially for an expired patent that must follow the Papst-Motoren claim interpretation standard to preserve validity? 
Continue Reading BPAI Applies an Implied Claim Construction in Patent Reexamination Appeal

c13The relevance of original patent application prosecution history in patent reexamination remains an unsettled issue at the USPTO. As we discussed last month, the MPEP mandates the application of Phillips v. AWH Corp., 415 F.3d 1303; (Fed. Cir. 2005) (en banc) with regard to according a plain meaning to claim terms.Yet the broadest reasonable interpretation (BRI) looks exclusively at the specification.

Last week, the BPAI addressed the use of prosecution history in according a plain meaning in Ex parte Team Worldwide Corporation (Appeal 2010-002223). In doing so, the Board reversed a rejection applied in reexamination based upon the plain meaning of “body.” In the Patentee’s brief, it was pointed out that the original patent application examiner advanced a similar understanding of the term “body” as that argued by the Patentee in the later patent reexamination. While the Board ultimately adopted the Patentee interpretation, it refused to consider the prosecution history, explaining:
Continue Reading Examiner Comments in Prosecution History Discounted as Unskilled?

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.”The BRI standard requires that claims be given a broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art; there is no mention of a prosecution history analysis. As the BRI standard is borrowed from application prosecution, it is no surprise that the case law and MPEP are silent on this issue. Of course, in fashioning claims to issue in a patent application, it is better to rely on the language of the claims than statements of claim scope. On the other hand, once claims are issued, history has proven that past statements of the record nevertheless shed significant light on the scope and meaning of claim terms.The current BRI analysis, whether dealing with issued claims subject to patent reexamination, or pending claims of a patent application, requires:1.     According claim terms their plain meaning (i.e., ordinary and customary consistent with MPEP 2111.01 citing Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc); and2.    Adjusting the plain meaning based upon any special definitions or contextual guidance of the specification from the perspective of one skilled in the art. MPEP 2111Using  this framework, the application of prosecution history in patent reexamination has been highly inconsistent.Step 1 above requires consideration of the prosecution history. Under Phillips, the ordinary and customary meaning of a term may be evidenced by a variety of sources, including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art. ” MPEP 2111.01 (indeed, the appeal record of  95/000/017 extensively analyzed prosecution history in accordance with Phillips).Confusingly, other Board cases that analyze the “reasonableness” of a given plain meaning (step 2 above) appear to dismiss prosecution history analysis altogether, simply instructing Patentees to amend. Ex parte Yasukochi et al. U.S. Patent 7,034,083 (footnote 8, it would be inappropriate for the Office to accept a disavowal of scope, no matter how clearly stated, in lieu of an amendment to the claims.).I expect either the Board or CAFC to clarify this issue down the road, the sooner the bett

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.”…
Continue Reading Inconsistent Claim Interpretation Practices in Patent Reexamination