The 2011 Leahy-Smith America Invents Act (“AIA”) created a procedure called inter partes review (“IPR”) at the United States Patent Office (“PTO”) that allowed third parties to petition the PTO to reexamine previously issued patents to re-evaluate their patentability in light of prior art.1 The Act also granted the PTO the authority to issue “regulations . . . establishing and governing inter partes review.”2 Accordingly, the PTO issued a regulation stipulating that during IPR, a patent claim “shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.”3 This instruction to patent examiners, however, starkly contrasts with the approach employed by federal district courts during invalidity and infringement proceedings, wherein judges construe claims based on the meaning they would have had to a person of ordinary skill in the art after reviewing the patent’s intrinsic record and proffered extrinsic evidence.4 These contrasting methods of claim construction generated separate bodies of law and inconsistent constructions of the same claim terms depending on the forum.
On one hand, opponents of the broadest reasonable interpretation standard (“BRI”) highlight various problems associated with its use. They argue that BRI undermines both the notice and uniformity functions of patents. The notice function of patents provides that the claims of a patent describe its outer limits, thereby putting the world on notice of what the inventor claims as his or her own. Yet, if the PTO uses a broader standard of claim construction, then members of the public cannot rely on statements made in the prosecution of the patent because it will be analyzed under a different standard during infringement proceedings in court. Moreover, the uniformity function of patents is violated by BRI because these different standards could result in inventors successfully defending claim terms in court only to see these same terms invalidated at the PTO when construed more broadly against prior art. Additionally, BRI opponents emphasize that BRI forces inventors to narrow their claims via amendment, which imposes substantial costs on them, including shortening the enforceable term of the patent, the loss of provisional rights, a forfeiture of claim scope, and a needless filing that taxes both the inventor’s and PTO’s resources.
On the other hand, BRI supporters tout its benefits. They first point to its general purpose, that it “serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified.”5 They argue that claim construction under the district court standard is needlessly complex and can even be unpredictable. District court claim construction principles require the judge to select amongst competing reasonable interpretations of the claims, whereas the PTO just needs to read the patent specification, consider all possible claim interpretations, remove those that are unreasonable and select the broadest one that is left. Perhaps even more importantly, one study suggests that claim construction proceedings in district courts might average over $1 million in attorney fees, which is an ominous sign for BRI opponents that would have the PTO employ district courts’ method of claim construction.
This summer, in a case called Cuozzo Speed Techs., LLC v. Lee, the Supreme Court heard a challenge to BRI and unanimously confirmed the PTO’s use of it during IPR.6 Applying Chevron7, the Court first stated that where a statute is ambiguous, the Court will interpret it as granting the agency leeway to enact reasonable regulations, and that the AIA was silent on standards of claim construction, but did give the PTO authority to issue regulations governing IPR.8 The Court then argued that use of BRI was reasonable because it encourages narrow claim drafting, which prevents preclusion of other patentable ideas while helping better understand the true limits of the claims.9 Silent on the costs of amendment, the Court also mentioned that use of BRI was not unfair, because patentees still had the opportunity to amend their claims if the examiner rejected them.10 Finally, the Court dismissed policy arguments by directing them to Congress, but noted briefly that inconsistent results of patent adjudication in the courts and at the PTO was “inherent to Congress’ regulatory design” because the AIA provided for a different burden of proof during IPR than what was used in district courts.11
Cuozzo appears to have ended the discussion of the appropriateness of BRI in the IPR context, but important questions remain. Should the requirements for claim amendments be revised to make it easier or less costly for inventors to amend under BRI? Should a district court’s interpretation of a claim term preclude the PTO from reexamination under BRI? These and other questions are worthy of consideration by the Court or Congress.
- 35 U.S.C. §100, et seq. [↩]
- Id. at §316(a)(4). [↩]
- 37 CFR §42.100(b). [↩]
- See generally Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). [↩]
- In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). [↩]
- 136 S. Ct. 2131 (2016). [↩]
- Chevron U. S. A. Inc. v. Natural Resources Defense Council, Inc., 467 U. S. 837, 842–843 (1984). [↩]
- Cuozzo, 415 F.3d at 2142-43. [↩]
- Id. at 2414-15. [↩]
- Id. at 2415. [↩]
- Id. at 2416. [↩]