PPC Broadband v Corning Optical: BRI Is Not an Infinitely Elastic Polymer
March 3, 2016
By Ken Bousfield
MPEP1 2111 reads:
“Claims must be given their broadest reasonable interpretation in light of the Specification.”
The MPEP then quotes Phillips v. AWH Corp.2:
“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.” … Indeed, the rules of the PTO require that application claims must “conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.”3
The MPEP distinguishes BRI4 in prosecution of patent applications at the PTO, where the Examiner has a duty to protect the public from broad over-broad claims, and the Applicant may amend, from interpretation during litigation in the courts where the Applicant cannot amend the claims5. The BRI standard is also used in Post-Grant Review proceedings before the Patent Trial and Appeal Board (PTAB) at the PTO. The BRI standard here is problematic since the opportunity to amend is fairly narrow – see the discussion in the well-gingered dissent of Newman J., in Cuozzo6.
Of course, Phillips itself can seem rather distant and theoretical in prosecution. It is not uncommon to receive Office Actions in which, as a practical reality, “BRI” often equates to “Broadest Imaginable Interpretation by the Craftiest Possible Examiner”.
It is not uncommon in prosecution for rejections to rest on interpretations that contradict the Applicant’s specification, the cited prior art being cited, or both. It may be difficult to overcome rejections based on interpretations that are neither (a) made through the eyes of a person of ordinary skill; nor (b) made in the context of the specification as a whole; nor (c) reasonable. Once an Examiner has made a Sphinx-like pronouncement of meaning (typically stretched to include a particular reference), the probability of a subsequent change of mind in response to an Applicant’s argument is comparable to the chance (and frequency) of an umpire or referee reversing a contested call in a televised playoff game.
Usually, the only hope is an appeal to the PTAB, itself not always a happy prospect.
In that light, the Federal Circuit decision in PPC Broadband, Inc., v. Corning Optical Communications RF., LLC7 comes as a welcome tonic.
PPC had invented a co-axial cable. Corning challenged PPC’s claims in Post Grant Review. The case turned on the meaning of the apparently innocuous term “resides around”. Reviewing dictionary definitions, the Board concluded “resides around” meant “in the immediate vicinity of; near”. The Federal Circuit found this unreasonably broad, and that the context of the specification required a meaning implying “encircled or surround”, although not necessarily complete encirclement.
In overturning the PTAB, the Federal Circuit held:
(i) Dictionary meanings are not necessarily reasonable.
(ii) Interpretation cannot be inconsistent with the specification.
(iii) Even the interpretation that reads on the largest number of disclosed embodiments is not necessarily “reasonable”.
(iv) Where there are many embodiments, claims may not necessarily read on even the preferred embodiment.
What is reasonable depends on context. As in Phillips, the inventor’s specification is always the highest intrinsic source of both context and meaning.
The court pointed out that the exercise of compiling dictionary meanings, in isolation, would naturally tend toward adoption of the broadest meaning – without regard to whether that meaning might not be reasonable in the context of the specification.
Interestingly, the court did not find that “resides around” had been specifically defined by the inventor acting as his or her own lexicographer. Rather the court found that the meaning to be chosen could be determined merely by requiring consistency with the manner in which the claim language had been used in the specification – where any special definition of the term was impliedly absent.
PPC does not change the law. It is, however, a timely and welcome reminder that the law does apply – sometimes even in the PTO.
1 USPTO Manual of Patent Examining Procedure.
2 Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)
3 Emphasis added, internal citation omitted: In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004).
4 The rule of “Broadest Reasonable Interpretation”, applied by Examiners in prosecution before the USPTO.
5 The applicable standard in litigation, also in Phillips, supra., is that claim terms are to be given the meaning they would have to a person of ordinary skill in the art, at the date of invention, based on intrinsic and extrinsic evidence.
6 In re Cuozzo Speed Technologies LLC, Federal Circuit 2014-1301, February 4, 2015
7 PPC Broadband, Inc., v. Corning Optical Communications RF, LLC, Fed. Cir., 2015-1364, February 22, 2016
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