©2017. Published in Landslide, Vol. 9, No. 3, January/February 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court noted that for more than a century the U.S. Patent and Trademark Office (USPTO) has applied the broadest reasonable interpretation (BRI) standard for claim construction.1 However, a claim construction standard for USPTO proceedings is not demanded by statute. Instead, pursuant to its rulemaking authority, the USPTO has adopted that a “claim in an unexpired patent . . . shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.”2 In Cuozzo, the Supreme Court stood by the USPTO’s standard, and held that the USPTO had the authority to apply BRI in inter partes review (IPR) proceedings.3
Application of BRI
IPRs apply two different standards for claim construction depending on whether the patent is unexpired or expired (or will expire during the IPR proceeding). A claim of an unexpired patent receives a “broadest reasonable construction in light of the specification . . . in which it appears.”4 Claims of an expired patent are construed using the Phillips standard, similar to a district court proceeding, under which claim terms “generally are given their ordinary and customary meaning, as understood by a person of ordinary skill in the art, at the time of the invention, taking into consideration the language of the claims, the specification, and the prosecution history of record.”5
Two different standards are applied, in part, because claims of an expired patent are not amendable whereas claims of an unexpired patent may be amended during an IPR.6 If a patent term expires during an IPR trial, but after the IPR has instituted, the Patent Trial and Appeal Board (PTAB) will apply the Phillips standard because claims of an expired patent are not subject to amendment.7 For example, in Google Inc. et al. v. Createads LLC, the challenged patent expired on July 1, 2014, approximately two months after IPR institution.8 The patent owner requested authorization to terminate the proceeding because the petitioners did not address the proper claim construction. The PTAB agreed the Phillips standard applied to the patent because it expired during the IPR proceeding; however, the PTAB denied the patent owner’s request to terminate because applying the Phillips standard did not change the PTAB’s claim constructions. The PTAB also noted that claim construction concerns could be addressed in the patent owner’s response and the petitioner’s reply.9 In some instances, prior to an institution decision, the PTAB may ask the parties to stipulate to the patent’s expiration date and agree that the BRI standard does not apply.10
Examples of BRI
Claim terms construed using BRI are given their “ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure.”11 In Cuozzo, for example, the PTAB construed the term “integrally attached” of the limitation “a speedometer integrally attached to said colored display” to mean “discrete parts physically joined together as a unit without each part losing its own separate identity.”12 Cuozzo argued for a broader construction (i.e., “joined or combined to work as a complete unit”). The Federal Circuit, affirmed by the Supreme Court, held that the PTAB’s construction properly applied BRI because the term “attached” must be given some meaning and it would “be illogical to regard one unit as being ‘attached’ to itself,” as Cuozzo proposed.13 Further, the PTAB’s interpretation was supported by the specification, which described a display being attached to a speedometer.
When applying the “ordinary and customary meaning,” the PTAB will consider the claim language, the specification, and the prosecution history. The PTAB will look at the language and context of the claim and may refer to a dictionary definition to determine the meaning of a claim term, particularly if the specification is not instructive.14 A stringent standard is applied for “narrowing a claim term beyond its ordinary and customary meaning.”15 With that being said, the PTAB has recognized at least two exceptions for applying the ordinary meaning to a claim term: (1) when the specification indicates an explicit definition for a claim term, and (2) when the full scope of a claim term is disavowed during prosecution.16
The BRI standard applies the ordinary and customary meaning to a claim term in view of the entire specification. For example, in BioDelivery Sciences International, Inc. v. RB Pharmaceuticals Ltd., the PTAB noted that the specification provided sufficient guidance for claim construction and expert testimony on claim construction was not needed.17 The PTAB held that the petitioner’s construction of “film formulation” as not including “a film” was unreasonably broad in light of the specification, which used the term “film formulation” synonymously with “film product, film composition, or film dosage” in at least two instances.18
To narrow the claim term beyond an ordinary and customary meaning, the patentee can act as its own lexicographer and set out an explicit definition in the specification. If the patentee defines a claim term, the definition must be clear and precise.19 For example, in Berk-Tek, LLC v. Belden Inc., the PTAB construed “a plurality of transmission media” to require all of the transmission media because, in part, the specification referred to the “plurality of transmission media” as “nothing less than all of the elements . . . cabled together.20
Further, in Scotts Co. LLC v. Encap, LLC, the PTAB construed the term “soil conditioning materials” as “materials that beneficially modify soil to which they are applied.”21 While the claims recited “a coating of a composition comprising soil conditioning materials,” the specification stated that “all soil conditioning materials contemplated herein beneficially modify soil to which they are applied, in some way other than direct provision of nitrogen, phosphorous, and/or potassium or other plant nutrients.”22 The PTAB limited the term based on the specification’s disclosure that “all soil conditioning materials” beneficially modify soil, but did not further limit the claim to include certain benefits of “the invention” that were provided in the specification.23
While the PTAB will consider the entire specification in its claim construction, it will not read definitions from the specification into a claim term absent a clear definition of the term.24 For example, in Veeam Software Corp. v. Symantec Corp., the PTAB declined the patent owner’s request to narrow the construction of the term “replicating said storage volume” to include “creating a duplicate copy of the storage volume.”25 The PTAB noted that while the patent disclosed that “replicating a storage volume creates a duplicate copy of the storage volume,” it also disclosed that “a duplicate copy of the primary storage volume may be created in the secondary storage volume using a point-in-time copy that contains only modified data from the primary storage volume.”26 Further, in Greene’s Energy Group, LLC v. Oil States Energy Services, LLC, the PTAB held that the term “mechanical lockdown mechanism” should not include “configured to provide a broad range of adjustment.”27 In this case, the specification of the challenged patent disclosed, “[i]n accordance with the invention, the mechanical lockdown mechanism 12 is configured to provide a broad range of adjustment.”28 The PTAB held that the use of “the invention” did not limit the scope of the term because it would render certain claims superfluous if the claim term already required a “broad range of adjustment.”29 Further, the PTAB noted that the specification used the term “preferably” when referring to an embodiment with a significant range of adjustment, which suggested that the broad range of adjustment was only one embodiment, and not the entire invention.30
In addition to looking at the entire specification, the PTAB will construe a claim term in light of the prosecution history. In Scotts Co., Encap argued that the term “in a solid state at time of coating” should mean a “solid material in the form of particulate, fibrous, or a suspension of a particulate or fibrous material in a liquid carrier.”31 Scotts (the petitioner) disagreed that the term should have this definition, as the specification stated that soil conditioning raw material may be fibrous or a suspension of powder. The PTAB agreed that the specification did not limit the claim term as Encap proposed; however, the PTAB looked to the prosecution history of the patent to determine if Encap disclaimed the scope of the claim. During prosecution, Encap added the term “in a solid state at time of coating” to overcome prior art that disclosed a material with 0.1–2.5 percent solids at the time of coating. Thus, the PTAB construed the term to mean more than 2.5 percent of the soil conditioning material in a solid state at the time of coating.32
The PTAB is not obligated to accept a claim construction offered in the prosecution history.33 Only a clear and unmistakable disavowal during prosecution overcomes a heavy presumption of plain and ordinary meaning. In Nintendo of America Inc. v. Motion Games, LLC, the patent owner argued that it explicitly disclaimed the plain and ordinary meaning of “creating a data base of said object” during prosecution because it stated, “it is the pattern itself . . . which is used regardless of a correlation to the actual object.”34 The PTAB held that a statement that the database can be used without reference to or knowledge of an object did not constitute a clear and unmistakable disavowal of a database that stored the sensed pattern with reference to or knowledge of the physical object.35
The strict standard of prosecution history disclaimer applies to both petitioners as well as patent owners. In International Business Machines Corp. v. Intellectual Ventures II LLC, the petitioner argued that the prosecution history of the challenged patent “characterizes two arithmetic units . . . as performing multiplication, addition, and sign inversion,” and as such disclaimed multifunctional units.36 The PTAB declined to limit the claim term “multiplication unit,” “addition unit,” and “sign inversion unit” to only one function each because the patent owner’s remarks were characterizing the prior art and not the scope of the claims. Thus, the PTAB held that the patent owner’s remarks did not constitute a “clear and unmistakable disavowal.”37
In Cuozzo, the Supreme Court recognized the possibility that having two different standards (i.e., Phillips and BRI) might produce inconsistent outcomes at the district court and the USPTO.38 The PTAB similarly recognizes the differences between the two standards and in certain circumstances adopts the district court’s claim construction, but is not obligated to do so.
In some cases, the PTAB will apply claim constructions, or the lack thereof, from district court proceedings to the IPR proceeding. For example, in Veeam Software, the claim term of “storage object” was being construed under BRI.39 Both parties argued for different constructions of the claim term. However, the PTAB agreed with the district court in a related proceeding and chose not to adopt either party’s construction because the claim language itself was clear.40 Similarly, in Kyocera Corp. v. Softview LLC, the PTAB construed the claim terms in the same way they were construed in the related district court litigation.41
While the PTAB may apply claim constructions from a district court case, consistent constructions are not required. For example, in Target Corp. v. Destination Maternity Corp., the parties did not offer any claim constructions, but the petitioner requested that the PTAB “review Patent Owner’s district court infringement contentions . . . , consider the claim construction implicit therein, and apply those constructions here.”42 The PTAB declined the petitioner’s request, noting the different standards and pointing out that “Petitioner has not identified any construction implicit in the infringement contentions, let alone explained a basis for adopting it.”43 Similarly, in Broadcom Corp. v. Telefonaktiebolaget L.M. Ericsson, the PTAB disagreed with the district court’s construction of the term “responsive to the receiving step,” even though it was unopposed by the parties.44 Because this construction relied on the preamble of the claim, and the preamble did not recite essential steps or structure, the district court’s construction was not the BRI of the limitation.45
The PTAB has discretion when applying claim constructions from related proceedings and is not required to apply the same construction across patent office proceedings. In Sipnet EU S.R.O. v. Straight Path IP Group, Inc., the PTAB adopted different claim constructions of the same term in a reexamination proceeding and an IPR.46 The PTAB noted that it is not required by statute to reject a petition based on the fact that certain arguments of art were previously considered by the USPTO.
In some instances, the PTAB’s consideration of related proceedings may potentially narrow BRI claim constructions. However, because the PTAB is at liberty to apply such constructions, the potential for limiting the claim term based on related proceedings may be essentially neutralized.
Under both BRI and Phillips, the PTAB or the district court will determine the ordinary and customary meaning of the claim term consistent with its use in the specification and prosecution. While BRI and Phillips are different standards on their face, in some instances the PTAB has determined that certain claim terms construed under the BRI standard do not have different definitions under the Phillips standard, or that such different definitions do not impact the proceedings. For example, in Cisco Systems, Inc. v. AIP Acquisition LLC, the PTAB determined that its claim construction under BRI did not change under the Phillips standard.47
Nonetheless, the distinction between BRI and Phillips is important to consider. For example, when the specification characterizes certain features as “the invention,” a claim term may be narrowed under the Phillips standard while maintaining a broader construction under the BRI standard.48 Similarly, if a claim construction does not read on a preferred embodiment, the claim construction may be deemed incorrect under the Phillips standard but might be acceptable under BRI.49 Further, whereas the BRI standard may not limit a construction based on the patent owner’s statements distinguishing the prior art, prior art may be a proper part of evidence considered under the Phillips standard.50 Finally, while a proposed construction that relies on the preamble may not be construed as the broadest reasonable interpretation of a limitation, the PTAB or the court may ask whether the preamble breathes life and meaning to the claim (including providing antecedent basis) under the Phillips standard.51
With the Supreme Court’s affirmation in Cuozzo, the BRI standard in IPRs is here to stay (at least for the moment). Thus, practitioners should consider how claim terms could be construed under BRI and Phillips.
1. 136 S. Ct. 2131, 2145 (2016).
2. 37 C.F.R. § 42.100(b).
3. Cuozzo, 136 S. Ct. at 2143.
4. 37 C.F.R. § 42.100(b).
5. Panel Claw, Inc. v. SunPower Corp., No. IPR2014-00386, Paper No. 7, at 7 (P.T.A.B. June 30, 2014) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)). While the Phillips standard is the same standard applied in district court proceedings, no presumption of validity is applied and the petitioners’ burden is evaluated under the preponderance of evidence standard.
6. Id.; see also Cuozzo, 136 S. Ct. at 2145–46.
7. Google Inc. v. Createads LLC, No. IPR2014-00200, Paper No. 19, at 2 (P.T.A.B. July 16, 2014).
9. Id. at 2–3.
10. See, e.g., Square, Inc. v. Cooper, No. IPR2014-00156, Paper No. 18, at 2–3 (P.T.A.B. June 23, 2014); Square, Inc. v. Cooper, No. IPR2014-00156, Paper No. 16, at 1 (P.T.A.B. June 13, 2014).
11. Redline Detection, LLC v. Star Envirotech, Inc., No. IPR2013-00106, Paper No. 66, at 8 (P.T.A.B. June 30, 2014) (citing In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)); Scotts Co. LLC v. Encap, LLC, No. IPR2013-00110, Paper No. 79, at 9 (P.T.A.B. June 24, 2014).
12. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890, aff’d, 136 S. Ct. 2131 (2016).
14. Xilinx, Inc. v. Intellectual Ventures I LLC, No. IPR2013-00112, Paper No. 51, at 9–10 (P.T.A.B. June 26, 2014); see also John M. Bird & Margaret M. Welsh, Strategic Considerations before Filing an IPR, 7 Landslide, no. 2, Nov./Dec. 2014. The canons of claim differentiation also apply under BRI, and “when a dependent claim adds a limitation relative to the independent claim on which it depends, there is a rebuttable presumption that the independent claim does not require that limitation.” Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, No. IPR2012-00001, Paper No. 59, at 17, 19 (P.T.A.B. Nov. 13, 2013).
15. Greene’s Energy Grp., LLC v. Oil States Energy Servs. LLC, No. IPR2014-00364, Paper No. 37, at 9–12 (P.T.A.B. May 1, 2015).
16. Scotts Co., No. IPR2013-00110, Paper No. 79, at 9.
17. No. IPR2014-00325, Paper No. 17, at 5–6 (P.T.A.B. July 29, 2014).
18. BioDelivery Scis. Int’l, Inc. v. RB Pharm. Ltd., No. IPR2014-00325, Paper No. 15, at 8–11 (P.T.A.B. Apr. 30, 2014).
19. Scotts Co., No. IPR2013-00110, Paper No. 79, at 9.
20. No. IPR2013-00057, Paper No. 46, at 9–13 (P.T.A.B. Mar. 18, 2014).
21. No. IPR2013-00110, Paper No. 79, at 9–10.
22. Id. at 9.
23. Id. at 10–11.
24. Redline Detection, LLC v. Star Envirotech, Inc., No. IPR2013-00106, Paper No. 66, at 8 (P.T.A.B. June 30, 2014) (citing In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)); Scotts Co., No. IPR2013-00110, Paper No. 79, at 9.
25. No. IPR2013-00143, Paper No. 48, at 9–10, 12 (P.T.A.B. July 29, 2014).
26. Id. at 10.
27. No. IPR2014-00364, Paper No. 37, at 8–9 (P.T.A.B. May 1, 2015).
28. Id. at 10.
29. Id. at 10–12.
30. Id. at 12 n.8.
31. Scotts Co. LLC v. Encap, LLC, No. IPR2013-00110, Paper No. 79, at 13–14 (P.T.A.B. June 24, 2014).
32. Id. at 14–16.
33. Apple Inc. v. Virnetx Inc., No. IPR2014-00238, Paper No. 15, at 6 (P.T.A.B. May 14, 2014).
34. No. IPR2014-00164, Paper No. 51, at 6 (P.T.A.B. May 15, 2014) (emphasis added).
36. No. IPR2014-00180, Paper No. 50, at 7–8 (P.T.A.B. Apr. 3, 2015).
38. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2146 (2016).
39. Veeam Software Corp. v. Symantec Corp., No. IPR2013-00143, Paper No. 11, at 6–7 (P.T.A.B. Aug. 7, 2013).
41. No. IPR2013-00256, Paper No. 51, at 8 (P.T.A.B. Mar. 27, 2014).
42. No. IPR2013-00531, Paper No. 10, at 6–7 (P.T.A.B. Feb. 14, 2014).
43. Id. at 7.
44. No. IPR2013-00601, Paper No. 29, at 9–10 (P.T.A.B. Mar. 10, 2014).
45. Id. at 10.
46. No. IPR2013-00246, Paper No. 11, at 9–10 (P.T.A.B. Oct. 11, 2013).
47. No. IPR2014-00247, Paper No. 14 (P.T.A.B. May 27, 2014); see also Toyota Motor Corp. v. Hagenbuch, No. IPR2013-00483, Paper No. 19, at 1 (P.T.A.B. Apr. 15, 2014).
48. Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2005); cf. Greene’s Energy Grp., LLC v. Oil States Energy Servs. LLC, No. IPR2014-00364, Paper No. 37 (P.T.A.B. May 1, 2015).
49. EPOS Techs., Ltd. v. Pegasus Techs., Ltd., 766 F.3d 1338, 1346–47 (Fed. Cir. 2014); cf. Greene’s Energy, No. IPR2014-00364, Paper No. 37.
50. Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1044–45 (Fed. Cir. 2000); cf. Int’l Bus. Machs. Corp. v. Intellectual Ventures II LLC, No. IPR2014-00180, Paper No. 50 (P.T.A.B. Apr. 3, 2015).
51. Pitney Bowes, Inc. v. Hewlett-Packard, Inc., 182 F.3d 1298, 1305 (Fed. Cir. 1999); cf. Broadcom Corp. v. Telefonaktiebolaget L.M. Ericsson, No. IPR2013-00601, Paper No. 29 (P.T.A.B. Mar. 10, 2014).