A potential source of claims construction disharmony

In October, the U.S. Patent and Trademark Office published a final rule change, replacing the former claim construction standard of "broadest reasonable interpretation" applied by the Patent Trial and Appeal Board in review proceedings with the narrower district court standard established in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). The rule change has been described as an effort to harmonize results in PTAB review proceedings and district court litigation. However, the rule change specifies that the Phillips standard will apply to both America Invents Act proceedings involving unexpired patent claims and substitute claims proposed in motions to amend. This potentially gives rise to a new source of disharmony: While patent examiners apply the broadest reasonable interpretation standard when prosecuting new claims submitted in patent applications, the PTAB will now apply the narrower Phillips standard when construing new claims submitted by patent owners in motions to amend. Part I of this article will discuss the previously expressed justifications for applying the two standards in their respective forums. Part II will discuss the potential implications of the PTO's rule change.

To grasp the implications of the PTO rule change, it is first necessary to understand the expressed justifications for patent examiners' application of the broadest reasonable interpretation standard to new claims in patent applications, versus district courts' application of the Phillips standard to granted patent claims. Patent examiners give new claim terms their broadest reasonable interpretation in light of the specification as it would be interpreted by one of ordinary skill in the art because doing so "establish[es] a clear record of what [an] applicant intends to claim" and "reduce[s] the possibility that the claim, once issued, will be interpreted more broadly than is justified." Manual of Patent Examining Procedure Section 2111 (citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)); see also In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. ... An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process."). Additionally, patent examiners construe claims using the broadest reasonable interpretation standard to explore how the possible scope of a claim implicates prior art, and ensure the claim does not sweep in such prior art. In re Zletz, 893 F.2d at 321 (holding that examiners apply the broadest reasonable interpretation standard "in order to achieve a complete exploration of the applicant's invention and its relation to the prior art."); Flo Healthcare Sols., LLC v. Kappos, 697 F.3d 1367, 1378 (Fed. Cir. 2012), overruled on separate grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) ("The ostensible purpose behind the PTO's use of the 'broadest reasonable interpretation' of an applicant's proposed claim is to allow the examiner and the applicant to explore the possible scope of the claim, particularly as it implicates prior art"); In re Wong, 80 F. App'x 107, 109 (Fed. Cir. 2003) (holding that "[w]hen claim 1 is given its broadest reasonable interpretation, the claim 'sweeps in the prior art.'"). Accordingly, the stated purpose of an examiners' application of the broadest reasonable interpretation standard to new claims in patent applications is to protect the public by ensuring that granted patent claims are clear, understandable, unambiguous, and do not cover already-patented inventions.

On the other hand, the district court standard annunciated in Phillips -- the well-known "ordinary and customary meaning to a person of ordinary skill in the art at the time of the invention" -- is, by its literal terms, ostensibly narrower than the broadest reasonable interpretation standard applied by patent examiners. This standard is appropriate in court, particularly given that granted patent claims enjoy a presumption of validity. 35 U.S.C. Section 282(a) ("A patent shall be presumed valid."). Accordingly, the stated rationale behind the Phillips standard being narrower than the broadest reasonable interpretation standard is that granted patent claims presumed to be valid should be construed more narrowly, and therefore should be harder to invalidate, as compared to new patent claims not entitled to a presumption of validity that are construed for the first time by patent examiners.

But submitting a patent application to the PTO for examination is not the only way to obtain new patent claims -- a patent owner may also file a motion to amend during inter partes review and propose "a reasonable number of substitute claims" to the PTAB. 35 U.S.C. Section 316(d)(1)(B). Prior to the PTO's recent rule change, these new "substitute claims" were construed by the PTAB using the broadest reasonable interpretation standard. See, e.g., Aqua Prod., Inc. v. Matal, 872 F.3d 1290, 1298-1301 (Fed. Cir. 2017) (noting that broadest reasonable interpretation is the claim construction standard applied by the PTAB to amended or substitute claims in inter partes reviews). Indeed, the U.S. Supreme Court in Cuozzo Speed Techs., LLC v. Lee held that it was specifically the patent owner's opportunity to amend (or substitute) claims that justified the PTAB's use of the broadest reasonable interpretation claim construction standard. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2145 (2016). The Supreme Court was likely contemplating that the same reasons for applying the broadest reasonable interpretation standard to new claims submitted to patent examiners at the PTO -- establishing a clear record of what an applicant intends to claim, reducing the possibility that the claim, once issued, will be interpreted more broadly than is justified, and ensuring the claim does not sweep in prior art -- should equally apply to new "substitute claims" submitted to the PTAB during inter partes reviews in motions to amend.

However, the PTO's Oct. 11, final rule change put an end to the PTAB's application of the broadest reasonable interpretation standard to substitute claims in motions to amend, as Part II of this article will explain.