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Broadest Reasonable Interpretation Standard Janet Gongola Associate Solicitor Office of the Solicitor U.S. Patent & Trademark Office.

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Presentation on theme: "Broadest Reasonable Interpretation Standard Janet Gongola Associate Solicitor Office of the Solicitor U.S. Patent & Trademark Office."— Presentation transcript:

1 Broadest Reasonable Interpretation Standard Janet Gongola Associate Solicitor Office of the Solicitor U.S. Patent & Trademark Office

2 Setting the Stage Setting the Stage

3 3 Why Claim Interpretation Matters

4 4

5 5

6 6 Overview Birth and Evolution of BRI Standard Birth and Evolution of BRI Standard Justification for BRI Standard Justification for BRI Standard Extension of BRI Standard Extension of BRI Standard Importance and Application of BRI Importance and Application of BRI Practical Tips Practical Tips When Worlds Collide: Parallel USPTO and District Court Proceedings Involving Claim Construction When Worlds Collide: Parallel USPTO and District Court Proceedings Involving Claim Construction

7 Birth and Evolution Birth and Evolution

8 8 In re Carr (D.C. Cir. 1924) Distinguished between claim interpretation before and after the issuance of a patent Distinguished between claim interpretation before and after the issuance of a patent Before Patent Issuance After Patent Issuance Applicant can control phraseology to cover his actual invention Patentee cannot control phraseology Give claim the broadest interpretation of which [it] reasonably [is] susceptible to protect real invention and to prevent needless litigation after patent issues Interpret claim to protect patentee

9 9 In re Kebrich (CCPA 1953) Echoes Carr Courts distinction between claim interpretation pre- and post- patent issuance Echoes Carr Courts distinction between claim interpretation pre- and post- patent issuance After patent issuance, a court construes a claim to sustain patents once granted After patent issuance, a court construes a claim to sustain patents once granted Before patent issuance, the USPTO and reviewing courts shall give claims the broadest interpretation which, within reason, may be applied Before patent issuance, the USPTO and reviewing courts shall give claims the broadest interpretation which, within reason, may be applied

10 10 In re Prater (CCPA 1969) Enhanced the Kebrich standard Enhanced the Kebrich standard Claims yet unpatented are to be given the broadest reasonable interpretation consistent with the specification during examination Claims yet unpatented are to be given the broadest reasonable interpretation consistent with the specification during examination No sound reason why, at any time before patent grant, an applicant should have limitations from the specification read into the claims where no express statement of limitation is included in the claim No sound reason why, at any time before patent grant, an applicant should have limitations from the specification read into the claims where no express statement of limitation is included in the claim

11 11 In re Sneed (Fed. Cir. 1983) Enhanced the Prater standard Enhanced the Prater standard It is axiomatic that, in proceedings before the PTO, claims in an application are to be given their broadest reasonable interpretation consistent with the specification,.... and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art It is axiomatic that, in proceedings before the PTO, claims in an application are to be given their broadest reasonable interpretation consistent with the specification,.... and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art

12 12 Vitronics Corp. v. Conceptronic, Inc. (Fed. Cir. 1996) Prior art references may be indicative of what all those skilled in the art generally believe a certain term means... [and] can often help to demonstrate how a disputed term is used by those skilled in the art Prior art references may be indicative of what all those skilled in the art generally believe a certain term means... [and] can often help to demonstrate how a disputed term is used by those skilled in the art

13 13 In re Morris (Fed. Cir. 1997) Set the definitive claim construction standard to be applied by the USPTO Set the definitive claim construction standard to be applied by the USPTO Applicant argued that USPTO required to used same claim construction standard applied by courts during infringement proceedings pursuant to Markman v. Westview Instruments, 52 F.3d 967 (Fed. Cir. 1995) (en banc) Applicant argued that USPTO required to used same claim construction standard applied by courts during infringement proceedings pursuant to Markman v. Westview Instruments, 52 F.3d 967 (Fed. Cir. 1995) (en banc) USPTO argued that it follows the BRI standard pursuant to long line of Federal Circuit precedent USPTO argued that it follows the BRI standard pursuant to long line of Federal Circuit precedent

14 14 Morris (cont.) Markman involved an infringement suit, a distinction with a difference Markman involved an infringement suit, a distinction with a difference Patents in infringement suits are presumed valid by statute. See 35 U.S.C. § 282 Patents in infringement suits are presumed valid by statute. See 35 U.S.C. § 282 In contrast, no presumption of validity before the USPTO; it is the USPTOs duty to assure that the patentability requirements are met before issuing a patent In contrast, no presumption of validity before the USPTO; it is the USPTOs duty to assure that the patentability requirements are met before issuing a patent

15 15 Morris (cont.) It would be inconsistent with the role assigned to the PTO in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid It would be inconsistent with the role assigned to the PTO in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid

16 16 Morris (cont.) [T]he PTO applies to the verbiage of the proposed claims [T]he PTO applies to the verbiage of the proposed claims [a] the broadest reasonable meaning of the words in their ordinary usage [b] as they would be understood by one of ordinary skill in the art, [c] taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicants specification

17 17 Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc) Confirmed the Morris standard Confirmed the Morris standard The Patent and Trademark Office (PTO) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art The Patent and Trademark Office (PTO) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art

18 18 BRI Standard Today Then: broadest interpretation within reason Then: broadest interpretation within reason Now: broadest reasonable interpretation in light of the specification as it would be interpreted by one of ordinary skill in the art Now: broadest reasonable interpretation in light of the specification as it would be interpreted by one of ordinary skill in the art See MPEP § See MPEP §

19 Justification for BRI Justification for BRI

20 20 Amendment of Claims During prosecution, an applicant can amend the claims to obtain protection commensurate with his invention During prosecution, an applicant can amend the claims to obtain protection commensurate with his invention Avoid cited prior art Avoid cited prior art Overcome written description or enablement rejection Overcome written description or enablement rejection Applicant and Examiner work to define the metes and bounds of the claim via the give and take of the rejection and response Applicant and Examiner work to define the metes and bounds of the claim via the give and take of the rejection and response Amend claim language to convey specific meaning Amend claim language to convey specific meaning Provide a definition in the specification Provide a definition in the specification Prosecution should result in claims that are precise, clear, correct, and unambiguous Prosecution should result in claims that are precise, clear, correct, and unambiguous

21 21 Amendment of Claims (cont.) Only by according claims with the BRI can uncertainties in claim scope be removed before patent issuance Only by according claims with the BRI can uncertainties in claim scope be removed before patent issuance Serves the public by reducing the possibility that, after the patent is granted, the claims may be interpreted by the courts as having broader coverage than justified or examined by the USPTO Serves the public by reducing the possibility that, after the patent is granted, the claims may be interpreted by the courts as having broader coverage than justified or examined by the USPTO

22 22 Presumption of Validity After patent issues, patentee cannot amend during infringement litigationthe patent is presumed valid under 35 U.S.C. § 282 After patent issues, patentee cannot amend during infringement litigationthe patent is presumed valid under 35 U.S.C. § 282 The exchange that transpired in the USPTO gave birth to the presumption of validity The exchange that transpired in the USPTO gave birth to the presumption of validity

23 23 Presumption of Validity (cont.) Because of the presumption of validity, district courts construe claims to preserve validity Because of the presumption of validity, district courts construe claims to preserve validity But, this rule of claim construction applies only where there is an ambiguity, i.e., more than one possible construction. See Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) But, this rule of claim construction applies only where there is an ambiguity, i.e., more than one possible construction. See Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005)

24 24 In re Etter (Fed. Cir. 1985) (en banc) Suggests inverse relationship between BRI and the presumption of validity, i.e., where the presumption attaches, BRI does not apply Suggests inverse relationship between BRI and the presumption of validity, i.e., where the presumption attaches, BRI does not apply After a patent issues, two situations exist: After a patent issues, two situations exist: The patent is presumed valid, placing the burdens of proof and persuasion on the party that attacks validity The patent is presumed valid, placing the burdens of proof and persuasion on the party that attacks validity The patentee cannot amend his claims. Claims are construed, if possible, to preserve them The patentee cannot amend his claims. Claims are construed, if possible, to preserve them Before a patent issues, neither situation exists: Before a patent issues, neither situation exists: There is no presumption of validity There is no presumption of validity The patentee can amend his claims. BRI applies The patentee can amend his claims. BRI applies

25 Extension of BRI Extension of BRI

26 26 In re Reuter (CCPA 1981) Applied BRI to reissue proceedings Applied BRI to reissue proceedings Little analysis; adoption of the logic of Prater Little analysis; adoption of the logic of Prater Acknowledges that the USPTO applies BRI to reduce the possibility that, after the patent is granted, the claims may be interpreted as giving broader coverage than is justified. In re Prater, 415 F.2d 1393, (CCPA 1969) Acknowledges that the USPTO applies BRI to reduce the possibility that, after the patent is granted, the claims may be interpreted as giving broader coverage than is justified. In re Prater, 415 F.2d 1393, (CCPA 1969)

27 27 In re Yamamoto (Fed. Cir. 1984) Applied BRI to reexamination proceedings. See MPEP § 2258, Part G Applied BRI to reexamination proceedings. See MPEP § 2258, Part G Applicant in a reissue proceeding has a statutory right to amend his claims to correspond with his contribution over the art. See 35 U.S.C. § 305 Applicant in a reissue proceeding has a statutory right to amend his claims to correspond with his contribution over the art. See 35 U.S.C. § 305

28 28 Miel v. Young (D.C. Circuit 1907) Applied BRI to interference proceeding Applied BRI to interference proceeding The reasonable presumption is that an inventor intends to protect his invention broadly; and consequently the courts have often said that the scope of a claim should not be restricted beyond the fair and ordinary meaning of the words, save for the purpose of saving it. The reasonable presumption is that an inventor intends to protect his invention broadly; and consequently the courts have often said that the scope of a claim should not be restricted beyond the fair and ordinary meaning of the words, save for the purpose of saving it.

29 29 Kuppenbender v. Riszdorfer (CCPA 1939) BRI applies to an interference count if no ambiguity exists in the language of the count BRI applies to an interference count if no ambiguity exists in the language of the count If ambiguity exists, then resort to specification to interpret the count If ambiguity exists, then resort to specification to interpret the count See 37 C.F.R (b) (2004) (A claim shall be given its broadest reasonable construction in light of the specification of the application or patent in which it appears.) See 37 C.F.R (b) (2004) (A claim shall be given its broadest reasonable construction in light of the specification of the application or patent in which it appears.)

30 30 Ex Parte Papst-Motoren (BPAI 1986) Single exception to USPTOs application of BRI. See MPEP § 2258, Part G Single exception to USPTOs application of BRI. See MPEP § 2258, Part G In a reexamination proceeding after the patent expires, BRI does not apply. Instead, the USPTO construes claims like the district court In a reexamination proceeding after the patent expires, BRI does not apply. Instead, the USPTO construes claims like the district court The reason is because an applicant cannot amend the claims since the patent has already expired. See 37 C.F.R. § 1.530(d) (1986) (providing that [n]o amended or new claims may be proposed for entry in an expired patent) The reason is because an applicant cannot amend the claims since the patent has already expired. See 37 C.F.R. § 1.530(d) (1986) (providing that [n]o amended or new claims may be proposed for entry in an expired patent)

31 31 Papst-Motoren (cont.) When would the USPTO reexamine an expired patent? When would the USPTO reexamine an expired patent? Reexamination requested 13 months before patent expired, and Board decision issued 13 months after patent expired Reexamination requested 13 months before patent expired, and Board decision issued 13 months after patent expired

32 32 In Re Tan (Reexamination No. 90/006,696; pending CAFC Appeal) Raises the Papst-Motoren rule as an issue Raises the Papst-Motoren rule as an issue Facts similar to Papst-Motorsen: reexamination request, patent expired, Board decision Facts similar to Papst-Motorsen: reexamination request, patent expired, Board decision Board declined to follow Papst-Motoren rule, reasoning that BRI applies because patentee had the opportunity to amend the claims during the First Office action, which issued before the patent expired Board declined to follow Papst-Motoren rule, reasoning that BRI applies because patentee had the opportunity to amend the claims during the First Office action, which issued before the patent expired Briefing in progress Briefing in progress

33 Importance & Application of BRI Importance & Application of BRI

34 34 Why the BRI Standard Matters Applicability of prior art and, in turn, rejections under 35 U.S.C. §§ 102 and 103 Applicability of prior art and, in turn, rejections under 35 U.S.C. §§ 102 and 103 Written description and enablement under 35 U.S.C. § 112, first paragraph Written description and enablement under 35 U.S.C. § 112, first paragraph Whether claim particularly points out and distinctly claims an applicants invention as required by 35 U.S.C. § 112, second paragraph Whether claim particularly points out and distinctly claims an applicants invention as required by 35 U.S.C. § 112, second paragraph

35 35 Standard of Review Claim construction is matter of law that the CAFC reviews de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) Claim construction is matter of law that the CAFC reviews de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) But, since USPTO gives claims their broadest reasonable interpretation, CAFC reviews the reasonableness of the USPTOs interpretation. In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997) But, since USPTO gives claims their broadest reasonable interpretation, CAFC reviews the reasonableness of the USPTOs interpretation. In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997)

36 36 In re Buszard (Fed. Cir. 2007) Claim 1: A flame retardant composition comprising... a flexible polyurethane foam reaction mixture Claim 1: A flame retardant composition comprising... a flexible polyurethane foam reaction mixture USPTO construed flexible polyurethane foam to mean any reaction mixture which produces, at least ultimately, a flexible polyurethane foam such that a flexible polyurethane foam would encompass a rigid foam product USPTO construed flexible polyurethane foam to mean any reaction mixture which produces, at least ultimately, a flexible polyurethane foam such that a flexible polyurethane foam would encompass a rigid foam product Applicant argued that a flexible polyurethane foam cannot include a rigid polyurethane mixture; the two mixtures are chemically different Applicant argued that a flexible polyurethane foam cannot include a rigid polyurethane mixture; the two mixtures are chemically different

37 37 Buszard (cont.) Was USPTOs construction reasonable? Was USPTOs construction reasonable?

38 38 Buszard (cont.) CAFC: No CAFC: No No matter how broadly flexible foam reaction mixture is construed, it is not a rigid foam reaction mixture No matter how broadly flexible foam reaction mixture is construed, it is not a rigid foam reaction mixture [I]t is not a reasonable claim interpretation to equate flexible with rigid, or to equate a crushed rigid polyurethane foam with a flexible polyurethane foam [I]t is not a reasonable claim interpretation to equate flexible with rigid, or to equate a crushed rigid polyurethane foam with a flexible polyurethane foam

39 39 Buszard (cont.) Implication: Prior art reference directed to a rigid foam product is not anticipatory Implication: Prior art reference directed to a rigid foam product is not anticipatory Only by mechanically crushing the rigid product into small particles is it rendered flexible, as a rock can be mechanically crushed to produce particles of sand Only by mechanically crushing the rigid product into small particles is it rendered flexible, as a rock can be mechanically crushed to produce particles of sand Reversed the Boards anticipation rejection Reversed the Boards anticipation rejection

40 40 Buszard (cont.) (J. Prost dissent) Boards interpretation was broad, but not unreasonable Boards interpretation was broad, but not unreasonable Specification states: Specification states: [t]he flexible polyurethane foam compositions... according to the present invention include all well known, industrial compositions. (Emphasis added) [t]he flexible polyurethane foam compositions... according to the present invention include all well known, industrial compositions. (Emphasis added) Description of how to make [t]he flexible polyurethane foam compositions covers how to make rigid polyurethane foam compositions Description of how to make [t]he flexible polyurethane foam compositions covers how to make rigid polyurethane foam compositions No evidence in the record of how a skilled artisan would define flexible polyurethane foam No evidence in the record of how a skilled artisan would define flexible polyurethane foam

41 41 In re Paulsen (Fed. Cir. 1994) Claim 1: A portable computer in the shape of a clam Claim 1: A portable computer in the shape of a clam USPTO construed computer to include a calculator USPTO construed computer to include a calculator Applicant argues that a computer is limited to a device having a display with graphics and text capability, sufficient data processing capacity, communication ports, a telephone connection---features absent in a calculator Applicant argues that a computer is limited to a device having a display with graphics and text capability, sufficient data processing capacity, communication ports, a telephone connection---features absent in a calculator

42 42 Paulsen (cont.) Was USPTOs construction reasonable? Was USPTOs construction reasonable?

43 43 Paulsen (cont.) CAFC: Yes CAFC: Yes A skilled artisan commonly understands that a computer is capable of carrying out calculations A skilled artisan commonly understands that a computer is capable of carrying out calculations

44 44 Paulsen (cont.) Implication: Affirmed anticipation rejection based on a prior art reference that disclosed a calculator in the shape of a portable attache case Implication: Affirmed anticipation rejection based on a prior art reference that disclosed a calculator in the shape of a portable attache case

45 45 In re Bigio (Fed. Cir. 2004) Claim 1: A hair brush comprising:... Claim 1: A hair brush comprising:... USPTO construed hair brush broadly to mean brushes used for human hair on the scalp as well as brushes used for hair on other animal parts (e.g., human facial hair, human eyebrow hair, pet hair) USPTO construed hair brush broadly to mean brushes used for human hair on the scalp as well as brushes used for hair on other animal parts (e.g., human facial hair, human eyebrow hair, pet hair) Applicant argued that hair brush was limited to brushes for the scalp hair only Applicant argued that hair brush was limited to brushes for the scalp hair only For support, Applicant pointed to Objects of the Invention, which discussed an anatomically correct hairbrush for brushing scalp hair For support, Applicant pointed to Objects of the Invention, which discussed an anatomically correct hairbrush for brushing scalp hair

46 46 Bigio (cont.) Was USPTOs construction reasonable? Was USPTOs construction reasonable?

47 47 Bigio (cont.) CAFC: Yes CAFC: Yes Hair preceding brush does not limit claim to any particular kind of hair (e.g., scalp hair) Hair preceding brush does not limit claim to any particular kind of hair (e.g., scalp hair) Hair brush may encompass not only scalp hair but any kind of hair (e.g., facial hair) Hair brush may encompass not only scalp hair but any kind of hair (e.g., facial hair) Board correctly did not import limitation from specification, i.e., Objects of the Invention Board correctly did not import limitation from specification, i.e., Objects of the Invention

48 48 Bigio (cont.) Implication: Board could apply three references directed to toothbrushes as prior art Implication: Board could apply three references directed to toothbrushes as prior art CAFC ultimately upheld obviousness rejection based on those toothbrush references CAFC ultimately upheld obviousness rejection based on those toothbrush references

49 49 In re Cortright (Fed. Cir. 1999) Claim 1 recites a method of treating scalp baldness with an antimicrobial to restore hair growth, which comprises rubbing into the scalp [Bag Balm®] Claim 1 recites a method of treating scalp baldness with an antimicrobial to restore hair growth, which comprises rubbing into the scalp [Bag Balm®] USPTO construed restore hair growth to mean returning the users hair to its original state, that is, a full head of hair USPTO construed restore hair growth to mean returning the users hair to its original state, that is, a full head of hair

50 50 Cortright (cont.) Was USPTOs construction reasonable? Was USPTOs construction reasonable?

51 51 Cortright (cont.) CAFC: No CAFC: No USPTOs construction should not be so broad as to conflict with the meaning given to identical terms in other patents from analogous arts USPTOs construction should not be so broad as to conflict with the meaning given to identical terms in other patents from analogous arts

52 52 Cortright (cont.) USPTOs construction of restore hair growth was inconsistent with the definition it gave to that phrase in three other patents USPTOs construction of restore hair growth was inconsistent with the definition it gave to that phrase in three other patents Patent 1: achieved a significant degree of improvement, partial filling-in and restoration of the bald spot, and fifty percent more hair in both the frontal and middle sections of his scalp Patent 1: achieved a significant degree of improvement, partial filling-in and restoration of the bald spot, and fifty percent more hair in both the frontal and middle sections of his scalp Patent 2: approximately 25% regrowth and increase in the number of new hairs... from 0 to 22 Patent 2: approximately 25% regrowth and increase in the number of new hairs... from 0 to 22 Patent 3: increased hair growth but not a complete baldness cure Patent 3: increased hair growth but not a complete baldness cure Skilled artisan would have construed restore hair growth to mean increasing the amount of hair grown on the scalp but not necessarily producing a full head of hair Skilled artisan would have construed restore hair growth to mean increasing the amount of hair grown on the scalp but not necessarily producing a full head of hair

53 53 Cortright (cont.) Implication: Enablement rejection reversed because specification taught the amount of Bag Balm® to apply and the amount of time in which to expect results Implication: Enablement rejection reversed because specification taught the amount of Bag Balm® to apply and the amount of time in which to expect results

54 54 In re Prater (CCPA 1969) Claim 9 directed to a method for processing spectographic data Claim 9 directed to a method for processing spectographic data USPTO interpreted the claim broadly to cover the mental processing of data by the use of pencil and paper by an operator USPTO interpreted the claim broadly to cover the mental processing of data by the use of pencil and paper by an operator Applicant disagreed and argued: Applicant disagreed and argued: claims must not be read in a vacuum but instead be read in light of the specification; and claims must not be read in a vacuum but instead be read in light of the specification; and Claim 9 is limited to machine processing. Claim 9 is limited to machine processing.

55 55 Prater (cont.) Was USPTOs construction reasonable? Was USPTOs construction reasonable?

56 56 Prater (cont.) CCPA: Yes CCPA: Yes Claim 9 contains no limitation, even when interpreted in light of the specification, to support Applicants construction as limited to machine processing Claim 9 contains no limitation, even when interpreted in light of the specification, to support Applicants construction as limited to machine processing CCPA ruled that Claim 9 thus failed to comply with 35 U.S.C. § 112, second paragraph for failing to particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention CCPA ruled that Claim 9 thus failed to comply with 35 U.S.C. § 112, second paragraph for failing to particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention

57 Practical Tips Practical Tips

58 58 Precise Language Applicant bears the burden to define his invention Applicant bears the burden to define his invention Absent an express definition in their specification, the fact that [Applicants] can point to definitions or usages that conform to their interpretation does not make the PTOs definition unreasonable when the PTO can point to other sources that support its interpretation. Morris, 127 F.3d at 1056 Absent an express definition in their specification, the fact that [Applicants] can point to definitions or usages that conform to their interpretation does not make the PTOs definition unreasonable when the PTO can point to other sources that support its interpretation. Morris, 127 F.3d at 1056 Tip: Define claim terms with clarity, precision, and deliberateness Tip: Define claim terms with clarity, precision, and deliberateness

59 59 Precise Language (Example) Claim 1: A method of assisting a user in obtaining repair services at the users premises from one of a plurality of service providers Claim 1: A method of assisting a user in obtaining repair services at the users premises from one of a plurality of service providers What does premises mean? What does premises mean? Land and buildings on it (e.g., house)? Land and buildings on it (e.g., house)? Motor home? Motor home? Property forming the subject of a conveyance? Property forming the subject of a conveyance?

60 60 Amendment CAFC has emphasized that applicants have a right to amend their claims in initial examination, in reexamination, and in reissue proceedings CAFC has emphasized that applicants have a right to amend their claims in initial examination, in reexamination, and in reissue proceedings Tip: When USPTO gives an overly broad definition to a claim that is outside the scope of what applicant believes his invention to be, amend the claim accordingly Tip: When USPTO gives an overly broad definition to a claim that is outside the scope of what applicant believes his invention to be, amend the claim accordingly

61 61 Amendment (Example) Claim 1: A method of assisting a user in obtaining repair services at the users premises from one of a plurality of service providers Claim 1: A method of assisting a user in obtaining repair services at the users premises from one of a plurality of service providers Examiner interprets premises to include any property that could be the subject of a covenyence, cites prior art teaching the use of an OnStar® system in a motor home to obtain emergency road service, and makes an obviousness rejection Examiner interprets premises to include any property that could be the subject of a covenyence, cites prior art teaching the use of an OnStar® system in a motor home to obtain emergency road service, and makes an obviousness rejection Amended Claim 1: A method of assisting a user in obtaining repair services at the users [premises] land, including its buildings, from one of a plurality of service providers Amended Claim 1: A method of assisting a user in obtaining repair services at the users [premises] land, including its buildings, from one of a plurality of service providers

62 When Worlds Collide: Parallel USPTO & District Court Proceedings Involving Claim Construction When Worlds Collide: Parallel USPTO & District Court Proceedings Involving Claim Construction

63 63 Ethicon v. Quigg (Fed. Cir. 1988) U.S. Surgical sued Ethicon for patent infringement U.S. Surgical sued Ethicon for patent infringement Approximately 1 year later, Ethicon filed a reexamination request on the patent Approximately 1 year later, Ethicon filed a reexamination request on the patent U.S. Surgical moved to stay the reexamination, pending the outcome of the litigation U.S. Surgical moved to stay the reexamination, pending the outcome of the litigation USPTO granted the stay, and Ethicon sued USPTO granted the stay, and Ethicon sued

64 64 Ethicon (cont.) CAFC required USPTO to resume the reexamination, rejecting the argument that the district court and reexamination proceedings would be duplicative CAFC required USPTO to resume the reexamination, rejecting the argument that the district court and reexamination proceedings would be duplicative The reason is because USPTO and district court employ different standards The reason is because USPTO and district court employ different standards District Court USPTO Patent presumed valid Patent not presumed valid; BRI applies Clear & convincing evidence to show invalidity Preponderant evidence to show invalidity

65 65 Ethicon (cont.) [W]e see nothing untoward about the PTO upholding the validity of a reexamined patent which the district court later finds invalid.... [I]f the district court determines a patent is not invalid, the PTO should continue its reexamination.... On the other hand, if a court finds a patent invalid, and that decision is either upheld on appeal or not appealed, the PTO may discontinue its reexamination [W]e see nothing untoward about the PTO upholding the validity of a reexamined patent which the district court later finds invalid.... [I]f the district court determines a patent is not invalid, the PTO should continue its reexamination.... On the other hand, if a court finds a patent invalid, and that decision is either upheld on appeal or not appealed, the PTO may discontinue its reexamination First in Time Later in Time USPTOvalidD.C.invalid D.C.not invalid USPTOcontinue D.C.invalidUSPTOstop

66 66 In re Trans Texas Holdings Corp. (Fed. Cir. 2007) District court infringement proceeding with claim construction followed by reexamination proceeding before USPTO District court infringement proceeding with claim construction followed by reexamination proceeding before USPTO Disputed claim limitation was responsive to the rate of inflation Disputed claim limitation was responsive to the rate of inflation District court construed the limitation to mean directly responsive to a market indicator of prior actual inflation, i.e., a one-to-one relationship District court construed the limitation to mean directly responsive to a market indicator of prior actual inflation, i.e., a one-to-one relationship

67 67 Trans Texas (cont.) USPTO applied the BRI and construed the limitation to mean not limited to a one-to-one relationship but instead includes a delayed relationship in which adjustments are made in one percent increments USPTO applied the BRI and construed the limitation to mean not limited to a one-to-one relationship but instead includes a delayed relationship in which adjustments are made in one percent increments Applicant argued that USPTO should have applied district courts narrower construction Applicant argued that USPTO should have applied district courts narrower construction

68 68 Trans Texas (cont.) CAFC upheld USPTOs construction, observing that USPTO applies BRI and that BRI supported a broader construction than accorded by the district court CAFC upheld USPTOs construction, observing that USPTO applies BRI and that BRI supported a broader construction than accorded by the district court Nothing in the specification or prosecution history to require an immediate inflation adjustment Nothing in the specification or prosecution history to require an immediate inflation adjustment Dictionary defines directly inter alia as after a little while: shortly, presently Dictionary defines directly inter alia as after a little while: shortly, presently

69 69 In re Translogic Tech., Inc. (Fed. Cir. 2007) Confirms Trans Texas that USPTO is not bound by a district courts earlier (and narrower) claim construction Confirms Trans Texas that USPTO is not bound by a district courts earlier (and narrower) claim construction Same facts as Trans Texas: district court infringement proceeding with claim construction followed by reexamination proceeding before USPTO Same facts as Trans Texas: district court infringement proceeding with claim construction followed by reexamination proceeding before USPTO CAFC again upheld USPTOs broader construction made under BRI standard CAFC again upheld USPTOs broader construction made under BRI standard

70 70 And the Curtain Falls...

71 71 Contact Information & Disclaimer USPTO Solicitors Office: (571) USPTO Solicitors Office: (571) Janet Gongola: Janet Gongola: Thanks to Anish Gupta, detailee, for his fine research assistance in preparing this presentation Thanks to Anish Gupta, detailee, for his fine research assistance in preparing this presentation


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