Federal Circuit Panel Blesses BRI Standard for Claim Construction at PTAB But Another Panel May Not

By Tom Engellenner
The Cuozzo v. Garmin case, discussed in our blog in January, has been decided in favor of the U.S. Patent and Trademark Office (USPTO). A divided panel decided 2-1 to uphold the USPTO’s claim construction standard used by the Patent Trial and Appeal Board (PTAB) in the new inter partes review proceedings under the America Invents Act (AIA). See, In re: Cuozzo Speed Technologies LLC, CAFC Case Number 2014-1301, Opinion dated February 4, 2015.

The majority decision, written by Judge Timothy Dyk, concludes that Congress authorized the “broadest reasonable interpretation” (BRI) standard for inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) proceedings, even if the statute did not define what claim construction standard should be used.

The majority opinion, in which Judge Raymond Clevenger joined Judge Dyks, found that the adoption of the BRI standard did not exceed the USPTO’s authority. “There is no indication that the AIA was designed to change the claim construction standard that the USPTO has applied for more than 100 years,” according Judges Dyks and Clevenger.

As the name suggests, the BRI rule gives the PTAB the ability to interpret each element of a claim as broadly as reasonably possible so long as the interpretation is not contradicted by the patent specification. The impact of such broad interpretations is that claim language can “read on” prior art that otherwise might not be relevant if the claim element is given its ordinary meaning. Continue reading “Federal Circuit Panel Blesses BRI Standard for Claim Construction at PTAB But Another Panel May Not”

Does the Broadest Reasonable Interpretation Standard Make Sense?

By Tom Engellenner
Two of the earliest challenges to patents under the new post grant proceedings established by the America Invents Act (AIA) are now on appeal to the Court of the Appeals for the Federal Circuit and both appeals are taking direct aim at the US Patent and Trademark Office’s decision to adopt a controversial standard for claim construction – the so-called “Broadest Reasonable Interpretation” standard – to govern all of the new AIA proceedings.

Versata v. SAP concerns the very first “covered business method” (CBM) review proceeding (CBM2012-00001) conducted by the USPTO and is on appeal by the Patent Owner, Versata, of the Patent Trial and Appeal Board (PTAB) decision to invalidate certain challenged claims. Cuozzo v. Garmin concerns the first inter partes review (IPR) proceeding and likewise is on appeal from a PTAB decision finding Couzzo’s claims invalid.

Both appellants are challenging the USPTO’s claim construction standard as impermissible substantive rule-making by the agency and arguing that the standard instead should be the same as that applied to issued patents by the federal courts – the so-called Phillips rule that requires judges and juries to give the elements of a claim their “ordinary and customary meaning.” (See, Phillip v AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)) Continue reading “Does the Broadest Reasonable Interpretation Standard Make Sense?”

A Patent Owner Bears a Heavy Burden in Amending Claims in an IPR Proceeding

By Reza Mollaaghababa

A patent owner in an inter-partes review (IPR) proceeding may amend a challenged patent if they satisfy a number of statutory requirements set forth by the AIA (America Invents Act) and the regulations promulgated by the USPTO.  In particular, the AIA states that “… the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: (A) Cancel any challenged patent claim. (B) For each challenged claim, propose a reasonable number of substitute claims.” 35 U.S.C. 316(d).  The USPTO rules (42.121) state:

(a)  Motion to amend. A patent owner may file one motion to amend a patent, but after conferring with the Board.
(1)  Due date.  Unless a due date is provided in a Board order, a motion to amend must be filed no later than the filing of a patent owner response.
(2)  Scope.  A motion to amend may be denied where:
(i)    The amendment does not respond to a ground of unpatentability involved in the trial; or
(ii)   The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.
(3) A reasonable number of substitute claims.  A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.  The presumption is that only one substitute claim would be needed to replace each challenged claims, and it may be rebutted by a demonstration of need.

Continue reading “A Patent Owner Bears a Heavy Burden in Amending Claims in an IPR Proceeding”