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Intellectual Property Litigation Committee

Harmonizing Standards for District Court and PTAB Claim Construction

By Robert M. Asher – August 4, 2014


Claim construction in the United States Patent and Trademark Office (PTO) has long been distinct from the approach used by courts to construe a patent claim. This is one reason the Patent Trial and Appeal Board (PTAB) has the power to invalidate patents found not invalid in district court. “[U]nlike in district courts, in reexamination proceedings claims are given their broadest reasonable interpretation, consistent with the specification . . .” In re Swanson, 540 F.3d 1368, 1377–8 (Fed. Cir. 2008) (internal quotation marks omitted).

The threat of inconsistent results took the judiciary by storm when it learned that an unpatentability ruling in the PTAB could nullify a court’s ruling the patent is not invalid, even after that ruling had been approved by the Federal Circuit on appeal. Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330 (Fed. Cir. 2013).

Inconsistent rulings, and particularly, inconsistent claim constructions are undesirable. Claim construction was taken away from juries in order to promote uniformity. The Supreme Court saw “the importance of uniformity in the treatment of a given patent as an independent reason to allocate all issues of construction to the court.” Markman v. Westview Instruments, 517 U.S. 370, 390 (1996). The Federal Circuit understands that inconsistent results are not ideal. In re Baxter Int’l, 678 F.3d 1357, 1365 (Fed. Cir. 2012) (“even with a more lenient standard of proof, the PTO ideally should not arrive at a different conclusion”). It appears that the time is right for the Federal Circuit to bring greater uniformity to claim construction. With the emergence of the new AIA post-grant proceedings, including inter partes reviews, covered business method reviews, and post-grant reviews, the court has an opportunity to discuss claim construction on a clean slate.

In “Inter Partes Review: The New Markman Hearing?,” I sought statutory support in the AIA for applying in inter partes review a proper-meaning approach as applied in the district courts. The PTO has vigorously opposed the proper-meaning approach in favor of “broadest reasonable construction in light of the specification.” 37 C.F.R. § 42.100 (b). While there are many proponents for the use of proper meaning in the AIA proceedings, this article considers an alternative approach, grounded in emerging Federal Circuit case law, which may achieve improved consistency while meeting with less resistance from the broadest-reasonable-construction advocates.

Broadest Reasonable Construction and Phillips
The Federal Circuit has begun to recognize that application of broadest reasonable construction in the PTAB requires attention to how district courts construe claim terms. Specifically, the tenets of Phillips v. AWH Corp., 415 F.3d 1303, 1315–17 (Fed. Cir. 2005) (en banc), which clarified the hierarchy of intrinsic and extrinsic evidence, must be heeded. The centrality of Phillips was asserted in an appeal from an ex parte reexamination before the Board. “[C]laim construction is a legal issue that we review de novo.In re Baxter Int’l, 678 F.3d at 1362 (citing Cybor Corp. v. FAS Techs., Inc.,138 F.3d 1448, 1454–55 (Fed. Cir. 1998) (en banc)). “To ascertain the scope and meaning of the asserted claims, we look to the words of the claims themselves, the specification, the prosecution history, and, lastly, any relevant extrinsic evidence.”

In other cases, we have seen the Federal Circuit struggle with whether, on appeal from a reexamination, the standard of review calls for: (1) seeking the correct claim scope de novo as in Phillips, or (2) deferring to the PTAB’s claim construction when it is reasonable in light of the specification. Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1380 (Fed. Cir. 2012) (Plager, J., additional views, “it is perhaps time that the court definitively decide en banc on an agreed review standard . . .”).

The Phillips teachings are being applied in numerous broadest reasonable construction cases. In a final written decision in an inter partes review, the PTAB stated:

We begin our claim construction analysis with the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (“It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.”) (citations and quotations omitted). Although some of the dependent claims are not involved in the instant proceeding, we review the claim features including those in dependent claims, as dependent claims further define the claim features in the involved independent claims. Id. at 1314 (“Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims.”).

CBS Interactive Inc. v. Helferich Patent Licensing LLC, IPR2013-00033, Paper 122, at 9–10 (P.T.A.B. Mar. 3, 2014). The PTAB has also made use of claim differentiation, much as this doctrine was enunciated in Phillips:

Emcore does not explain adequately as to why the term “annealing” recited in independent claim 1 should be construed to require a limitation recited in a dependent claim 15. Phillips, 415 F.3d at 1314–15 (stating “the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); see also Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) (“In the most specific sense, ‘claim differentiation’ refers to the presumption that an independent claim should not be construed as requiring a limitation added by a dependent claim.”).

Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 68, at 12–13 (P.T.A.B. Feb. 11, 2014).

Even when applying broadest reasonable construction, “the specification is always highly relevant to the claim construction analysis. . . . [u]sually, it is dispositive; it is the single best guide to the meaning of a disputed term.” In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1315) (internal quotation marks omitted). In Abbott, the Federal Circuit relied on the patent specification to define and narrow the claim construction for an electrochemical sensor to mean a sensor without external cables or wires because that is how they are consistently and exclusively depicted in the patent.

Even in a patent application appeal, the Federal Circuit reversed the PTAB holding that “adapted to” could not be read broadly to mean “capable of.” “Although the phrase can also mean ‘capable of’ or ‘suitable for,’ . . . here the written description makes clear that ‘adapted to,’ as used in the ’261 application, has a narrower meaning, viz., that the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles.” In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). According to the Federal Circuit, the pre-issuance claim construction standard for the PTO “has been to give claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Giuffrida,527 F. App’x 981, 986 (Fed. Cir. 2013) (citing Phillips, 415 F.3d at 1316) (internal citation and quotation marks omitted) (the dictionary meaning of a term may be too broad to constitute the broadest reasonable construction where the specification described the meaning of the term with greater specificity).

Addressing the final leg of intrinsic evidence—the prosecution history—the Federal Circuit, in Phillips, ruled: “In addition to consulting the specification, we have held that a court should also consider the patent’s prosecution history, if it is in evidence.” 415 F.3d at 1317 (internal quotation marks omitted). This too has been applied to claim construction in the PTAB.

In Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014), the Federal Circuit ruled that the PTAB, in an inter partes reexamination processing, correctly rejected the broad dictionary-based claim construction adopted by the patent examiner. The correct claim construction was based on a meaning supplied by the patent applicant during the original patent application prosecution. On appeal from the PTAB, the Federal Circuit stated, “In claim construction, this court gives primacy to the language of the claims, followed by the specification. Additionally, the prosecution history, while not literally within the patent document, serves as intrinsic evidence for purposes of claim construction. This remains true in construing patent claims before the PTO.” Tempo Lighting, 742 F.3d at 977 (citing In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).

Further, the Federal Circuit confirmed that, like a court, the PTAB should place little value on extrinsic evidence that contradicts the intrinsic evidence.

In sum, the examiner erred by resorting to extrinsic evidence that was inconsistent with the more reliable intrinsic evidence. Bell Atl. Network Servs. v. Covad Commc’ns Grp., 262 F.3d 1258, 1269 (Fed. Cir. 2001) (“[E]xtrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.”).

Tempo Lighting, 742 F.3d at 977–8.

Persuasive Effect of Prior Claim Construction Analyses

Based on this review of recent broadest-reasonable-construction cases, the Federal Circuit should have no trouble requiring the PTAB in AIA proceedings to apply the same intrinsic evidence analysis as the courts perform for the purposes of claim construction. The courts will then be able to constructively make use of the PTAB’s underlying intrinsic evidence analyses, so long as the PTAB presents these analyses explicitly and separately in its decisions.

Likewise, the PTAB will be able to strive for consistency with earlier court decisions on these issues. Such consistency has been viewed with favor. For example, in a prior decision, a district court had analyzed the intrinsic evidence to determine that the patent applicant had not narrowed the ordinary meaning of a term by explicitly disavowing certain claim scope. Although the district court’s construction was ultimately narrow for other reasons, the Board was nevertheless able to find consistency with the factual finding of no disavowal in the intrinsic evidence. See In re Rambus, 694 F.3d 42, 48 (Fed. Cir. 2012) (“Moreover, and consistent with the district court’s opinion in Micron, there is no basis to find a disavowal or redefinition that would limit the term ‘memory device’ to a single chip.”)

Earlier claim constructions will rarely have collateral estoppel effect, but as in the situation where one district court issues a claim construction before a second district court addresses the same patent claims, an earlier construction can be given significant persuasive effect. See, e.g., Powervip, Inc. v. Static Control Components, Inc., 2011 WL 2669059 (W.D. Mich. July 6, 2011) (“[T]he Court finds, as have several other district courts faced with the issue, that while not entitled to a preclusive effect, the MDNC Markman order is instructive and may properly be considered by the Court in rendering its own construction of the claims at issue.” (internal citations omitted)). See, e.g., Parker–Hannifin Corp. v. Baldwin Filters, Inc., 724 F. Supp. 2d 810, 815–16 (N.D. Ohio 2010) (holding that the prior order would receive “deferential treatment unless clearly erroneous,” but was not entitled to a preclusive effect); Kim v. The Earthgrains Co., 2005 WL 66071, at *11 (“While stopping short of according a preclusive effect to Judge Hart’s claim construction, the court will bear his interpretations in mind as instructive while rendering its own construction of the claims at issue here.”); Nilssen v. Motorola, Inc., 80 F. Supp. 2d 921, 924 n.4 (N.D. Ill. 2000) (“[W]hile the court is respectful of Judge Kennelly’s ruling construing some of the claims in those patents . . . and of the ‘importance of uniformity in the treatment of a given patent,’ it is not compelled to reach the same conclusions.” (internal citation omitted)); Tex. Instruments, Inc. v. Linear Techs. Corp., 182 F. Supp. 2d 580, 589 (E.D. Tex. 2002) (finding that a court should be respectful of and may defer to a prior construction, but that it is not bound by it).

Some Differences between PTAB and Court Constructions Are Unavoidable
Even when intrinsic evidence analyses are conducted similarly in court and in PTAB proceedings, some issues arise demanding differing approaches. When “the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous,” a court may construe the claims in such a manner so as to preserve their validity. Phillips, 415 F. 3d at 1327. The PTAB would not apply this doctrine, but would instead accept the broadest of otherwise equally acceptable constructions.

In court, in view of a co-pending or previous PTAB proceeding, statements made by the patent owner may be used by the court when the statements amount to prosecution disclaimer. Such statements may result in a narrower construction in court when the PTAB did not accede to those statements in its claim construction in the PTAB proceeding. Differing presentations of extrinsic evidence in the two forums might also contribute to differing claim constructions. Other situations demanding differing constructions in court and the PTAB can be imagined and will be handled by the courts on a case-by-case basis.

Differing Broadest Reasonable Construction Approaches
Broadest reasonable construction in AIA proceedings need not be confused with broadest reasonable construction before a patent examiner. While these standards would certainly benefit by receiving different names to reduce confusion between them, for now it would be enough to recognize the differences. In front of a patent examiner, “the broadest reasonable interpretation is an examination protocol, not a rule of law.” Flo Healthcare, 697 F.3d at 1382 (Newman, J., additional views) (internal quotation marks omitted). “In this demanding process, the examiner views the applicant’s presentation broadly in order to assure that all possibly relevant prior art is explored. . . . That is the role of broadest reasonable interpretation: it is an examination tool whereby the applicant and the examiner work together to determine and define the ‘invention’ to be claimed.” Flo Healthcare, 697 F.3d at 1382 (Newman, J., additional views) (some internal quotation marks omitted). The effect of broadest reasonable interpretation before an examiner is that the applicant may be forced to amend its claims to better define the invention.

AIA proceedings are totally different from patent prosecution. Here, claim construction is used in the determination of patentability of an issued patent claim, with the ultimate potential effect of invalidating the claim. The recent precedents discussed above should lead to determining the correctness of claim construction through a careful evaluation of the intrinsic evidence as well as consideration of extrinsic evidence to the extent it does not contradict, expand, or limit the meaning determined from the intrinsic evidence.

Were the Federal Circuit instead to mistakenly treat broadest reasonable construction like a patent examiner, the risk would rise of inconsistent claim constructions by the Federal Circuit itself. Without a common approach in the PTAB and the courts, a claim construction approved in the Federal Circuit on appeal from an AIA proceeding would be of no persuasive value to the district court. The district court could arrive at a claim construction entirely different from that approved by the Federal Circuit. The Federal Circuit could then quite properly—using a different approach to claim construction—approve this distinctly different claim construction, in contradiction of its own earlier claim construction ruling from the PTAB appeal. This is the antithesis of uniformity.

By following the tenets of Phillips in AIA proceedings, as the PTAB and the Federal Circuit have done in recent cases, the claim construction decisions made during these proceedings will have an enhanced persuasive value in court, contributing to the goal of uniformity. Greater consistency and predictability will result. This carries great importance given that uniformity was a stated goal of Markman and claim construction in the first place.

Keywords: litigation, intellectual property, PTAB, claim construction, inter partes review, broadest reasonable construction, AIA

Robert M. Asher is a partner at Sunstein Kann Murphy & Timbers LLP in Boston, Massachusetts.

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