Claim Construction at the Patent Office: What is Reasonable?
During examination of patent applications, the U.S. Patent & Trademark Office (USPTO) applies the “broadest reasonable interpretation” (“BRI”) standard to determine the meaning of claim terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). This same standard is applied to patents reviewed by the Patent Trial and Appeal Board (“PTAB”) during post-grant review. 37 C.F.R. §42.100(b). More specifically, under the BRI standard, claims are construed to have a meaning consistent with the ordinary and customary meaning of the term, unless otherwise defined in the specification, and consistent with the meaning or usage within the specification and drawings as interpreted by one possessing ordinary skill in the art. See Manual of Patent Examination & Procedure § 2111 [R-07.2015]; see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Suitco Surface, Inc., 603 F.3d 1255, 1259, 94 USPQ2d 1640, 1643 (Fed. Cir. 2010); (Microsoft Corp. v. Proxy-conn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
A recent U.S. Federal Circuit case (In re Nuvasive, Inc.), while non-precedential, highlights the requirement that the construction of a claim must be tied to the specification. This particular case focused on the meaning of the term “lateral” within the context of surgical methods along a lateral trans-psoas path. In construing the claim, the PTAB relied on expert testimony from the inventor of a prior art patent that was relied on to find obviousness. The prior art inventor’s testimony revealed the meaning of the term “lateral” within the context of his patent regarding a related, albeit different, surgical method. The Federal Circuit found the PTAB’s interpretation of the term “lateral” unreasonably broad because it relied on testimony not tied to the specification of the patent at issue but rather to another patent and a different surgical method. Moreover, the Court found that the specification of the patent at issue indicated that the proper scope of the term “lateral” was more restrictive than the PTAB’s construction. Indeed, the Court found that “the Board’s construction seemingly drains the term of meaning in the claim phrase.”
In practice, examiners and the Board rely heavily on the BRI standard in providing the framework for anticipation and obviousness rejections. While claims may not be construed to import limitations from the specification, the specification provides meaningful guidance regarding the meaning of claim terms. This case emphasizes the need for a close review by patent practitioners of the PTO’s claim constructions to ensure that the interpretation is reasonable in breadth considering the specification.