Broadest Reasonable Interpretation Has Limits

Every patent practitioner has felt the frustration that the USPTO’s “broadest reasonable interpretation” standard for claim construction seems to mean that claims say whatever the Patent Office wants them to mean. However, the Federal Circuit has reaffirmed that the standard does have limits. In Straight Path IP Group, Inc. v. Sipnet EU S.R.O., No. 15-1212 (Fed. Cir. Nov. 25, 2015), the court held that the Patent Trial and Appeal Board’s claim construction of claims of U.S. Patent No. 6,108,704, on which the PTAB relied in canceling claims in an Inter Partes review, unreasonably departed from the plain meaning of the claim language. Judge Taranto, joined by Judge Hughes, wrote for a split panel; Judge Dyk dissented.

At issue was the meaning of “connected to the computer network” in the recitation of “program code for transmitting, to the server, a query as to whether the second process is connected to the computer network.” The PTAB had found, in part relying on the patent Specification, that “connected to the computer network” was satisfied by a process that had been active and on-line at the time of registration of the server. The patent owner contended, in contrast, that the claim language required that a “present-tense status” of connectivity had to be satisfied.

The court began by noting the applicability of the broadest reasonable interpretation (BRI) standard to Inter Partes proceedings, citing its recent decisions in In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268, 1279–80 (Fed. Cir. 2015) and Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015). Here, there was a question as to whether the “plain and ordinary meaning” standard of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), should apply, because the ’704 patent had expired while the appeal was pending, and the Phillips standard is applicable to expired patents. The majority and Judge Dyk agreed, however, that this case would come out the same way under either standard – they simply disagreed as to the result.

Here, the majority explained, the claim language had “a meaning that can only be called plain.” The majority thought that “[t]he present tense ‘is’ in ‘is connected to the computer network’ plainly says that the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” To say that the claim covered queries for registration information “even if that registration information is no longer accurate” was “not a reasonable interpretation of the claim language.”

Further, the court declined to hold that, contrary to the PTAB’s and the challenger’s arguments, the Specification required a contrary holding. Where the claim had such a plain meaning, as here, “it is particularly difficult to conclude that the specification reasonably supports a different meaning.” It would be more reasonable to refer to the Specification were the claim language more uncertain. Following Phillips, the Court saw no clear disavowal of the plain meaning of the claims in the Specification, and therefore declined to read the claim language other than according to its plain meaning.

In dissent, Judge Dyk thought that “the majority fails to give sufficient weight to the specification which Phillips v. AWH Corp. holds ‘is always highly relevant to the claim construction analysis,’ and is ‘the single best guide to the meaning of a disputed term.’” Judge Dyk further thought that the term “is” does not absolutely require real-time currency, and that the term should have been read in light of the Specification. According to Judge Dyk, the Specification made clear that “is connected” did not require a “real-time check.”

The takeaway: coming after Microsoft v. Proxyconn, this case gives more teeth to arguments against seemingly infinite claim constructions that purport to rely on the BRI standard. Patent examiners undeniably and not infrequently stretch the BRI standard to make claim language match prior art; practitioners should be vigilant for such abuses.  Although this case took place in the context of an Inter Partes Review, practitioners should take heed, and take heart, in ex parte prosecution as well.

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