Inconsistent Claim Interpretation Practices in Patent Reexamination

Inconsistent Claim Interpretation Practices in Patent Reexamination

DOES THE ORIGINAL PROSECUTION HISTORY FACTOR INTO A BROADEST REASONABLE INTERPRETATION ANALYSIS?

It is well established that a broadest reasonable interpretation (BRI) claim analysis is applied in both the prosecution of patent applications as well as in patent reexamination proceedings.  In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984).  The justification for the application of the BRI standard in patent reexamination is that much like original application prosecution, the claims at issue in reexamination may be amended. Yet, the application of a strict BRI analysis to previously issued claims in patent reexamination, in many circumstances, deprives Patentees of the benefit of their original bargain with the USPTO.

By disregarding a clear disclaimer in claim scope of the original prosecution in a subsequent patent reexamination, history is effectively rewritten. In other words, an expansion of claim scope to the point of embracing disclaimed subject matter is not possible in district court since prosecution history estoppel absolutely forecloses such an interpretation. Yet, by following the explicit requirement of the BRI of MPEP 2111 original prosecution history need not be considered. Such a limited analysis in patent reexamination expands the issued claim scope to embrace surrendered subject matter (i.e., beyond that which was originally bargained); in doing so, the Office unwittingly compromises the property rights of the Patentee.  Certainly, while it is true that claims can be amended by the Patentee to explicitly exclude subject matter disclaimed previously by argument only, such an amendment of issued claims may create intervening rights, potentially surrendering significant property rights for past infringement.

It is for this reason that a strict BRI standard such as used in original prosecution is incongruous in analyzing previously issued claims in patent reexamination. Instead, the BRI standard for patent reexamination should be re-calibrated to the "broadest reasonable interpretation consistent with the intrinsic record."

The BRI standard requires that claims be given a broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art; there is no mention of a prosecution history analysis. As the BRI standard is borrowed from application prosecution, it is no surprise that the case law and MPEP are silent on this issue. Of course, in fashioning claims to issue in a patent application, it is better to rely on the language of the claims than statements of claim scope. On the other hand, once claims are issued, history has proven that past statements of the record nevertheless shed significant light on the scope and meaning of claim terms.

The current BRI analysis, whether dealing with issued claims subject to patent reexamination, or pending claims of a patent application, requires:

1.     According claim terms their plain meaning (i.e., ordinary and customary consistent with MPEP 2111.01 citing Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc); and

2.    Adjusting the plain meaning based upon any special definitions or contextual guidance of the specification from the perspective of one skilled in the art. MPEP 2111

Using  this framework, the application of prosecution history in patent reexamination has been highly inconsistent.

Step 1 above requires consideration of the prosecution history. Under Phillips, the ordinary and customary meaning of a term may be evidenced by a variety of sources, including "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art. " MPEP 2111.01 (indeed, the appeal record of  95/000/017 extensively analyzed prosecution history in accordance with Phillips).

Confusingly, other Board cases that analyze the "reasonableness" of a given plain meaning (step 2 above) appear to dismiss prosecution history analysis altogether, simply instructing Patentees to amend. Ex parte Yasukochi et al. U.S. Patent 7,034,083 (footnote 8, it would be inappropriate for the Office to accept a disavowal of scope, no matter how clearly stated, in lieu of an amendment to the claims.).

I expect either the Board or CAFC to clarify this issue down the road, the sooner the better.

View more from Patents Post-Grant