Broadest Broadest Reasonable Reasonable

Interpretation Interpretation StandardStandard

Janet GongolaJanet GongolaAssociate SolicitorAssociate Solicitor

Office of the SolicitorOffice of the SolicitorU.S. Patent & Trademark OfficeU.S. Patent & Trademark Office

Setting the StageSetting the Stage

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Why Claim Why Claim Interpretation MattersInterpretation Matters

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OverviewOverview Birth and Evolution of BRI StandardBirth and Evolution of BRI Standard

Justification for BRI StandardJustification for BRI Standard

Extension of BRI Standard Extension of BRI Standard

Importance and Application of BRIImportance and Application of BRI

Practical TipsPractical Tips

When Worlds Collide: Parallel USPTO and When Worlds Collide: Parallel USPTO and District Court Proceedings Involving Claim District Court Proceedings Involving Claim ConstructionConstruction

Birth and Birth and EvolutionEvolution

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In re CarrIn re Carr(D.C. Cir. 1924)(D.C. Cir. 1924)

Distinguished between claim Distinguished between claim interpretation before and after the interpretation before and after the issuance of a patentissuance of a patentBefore Patent Before Patent

IssuanceIssuanceAfter Patent After Patent

IssuanceIssuanceApplicant can control Applicant can control phraseology to cover his phraseology to cover his actual inventionactual invention

Patentee cannot control Patentee cannot control phraseologyphraseology

Give claim “the Give claim “the broadest interpretation broadest interpretation of which [it] reasonably of which [it] reasonably [is] susceptible” to [is] susceptible” to protect real invention protect real invention and to prevent needless and to prevent needless litigation after patent litigation after patent issuesissues

Interpret claim to Interpret claim to protect patenteeprotect patentee

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In re KebrichIn re Kebrich(CCPA 1953)(CCPA 1953)

Echoes Echoes CarrCarr Court’s distinction between claim Court’s distinction between claim interpretation pre- and post- patent issuanceinterpretation pre- and post- patent issuance

After patent issuance, a court construes a After patent issuance, a court construes a claim to “sustain patents once granted”claim to “sustain patents once granted”

Before patent issuance, the USPTO and Before patent issuance, the USPTO and reviewing courts shall give claims “reviewing courts shall give claims “the the broadest interpretation which, within reason, broadest interpretation which, within reason, may be appliedmay be applied””

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In re PraterIn re Prater(CCPA 1969)(CCPA 1969)

Enhanced the Enhanced the KebrichKebrich standard standard

“ “Claims yet unpatented are to be given the Claims yet unpatented are to be given the broadest reasonable interpretation broadest reasonable interpretation consistent with the specificationconsistent with the specification” during ” during examinationexamination

No sound reason why, at any time before No sound reason why, at any time before patent grant, an applicant should have patent grant, an applicant should have limitations from the specification read into limitations from the specification read into the claims where no express statement of the claims where no express statement of limitation is included in the claimlimitation is included in the claim

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In re SneedIn re Sneed(Fed. Cir. 1983)(Fed. Cir. 1983)

Enhanced the Enhanced the PraterPrater standard standard

““It is axiomatic that, in proceedings It is axiomatic that, in proceedings before the PTO, claims in an application before the PTO, claims in an application are to be given their broadest are to be given their broadest reasonable interpretation consistent reasonable interpretation consistent with the specification, . . . . and that with the specification, . . . . and that claim language should be read in light of claim language should be read in light of the specification as it would be the specification as it would be interpreted by one of ordinary skill in interpreted by one of ordinary skill in the artthe art””

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Vitronics Corp. v. Vitronics Corp. v. Conceptronic, Inc.Conceptronic, Inc.

(Fed. Cir. 1996)(Fed. Cir. 1996) Prior art references may be Prior art references may be

“indicative of what all those skilled “indicative of what all those skilled in the art generally believe a certain in the art generally believe a certain term means . . . [and] can often help term means . . . [and] can often help to demonstrate how a disputed term to demonstrate how a disputed term is used by those skilled in the art”is used by those skilled in the art”

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In re MorrisIn re Morris(Fed. Cir. 1997)(Fed. Cir. 1997)

Set the definitive claim construction Set the definitive claim construction standard to be applied by the USPTOstandard to be applied by the USPTO

Applicant argued that USPTO required to Applicant argued that USPTO required to used same claim construction standard used same claim construction standard applied by courts during infringement applied by courts during infringement proceedings pursuant to proceedings pursuant to Markman v. Markman v. Westview InstrumentsWestview Instruments, 52 F.3d 967 , 52 F.3d 967 (Fed. Cir. 1995) ((Fed. Cir. 1995) (en bancen banc))

USPTO argued that it follows the BRI USPTO argued that it follows the BRI standard pursuant to long line of Federal standard pursuant to long line of Federal Circuit precedentCircuit precedent

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Morris (cont.)Morris (cont.) MarkmanMarkman involved an infringement suit, “a involved an infringement suit, “a

distinction with a difference”distinction with a difference”

Patents in infringement suits are presumed Patents in infringement suits are presumed valid by statute. valid by statute. SeeSee 35 U.S.C. § 282 35 U.S.C. § 282

In contrast, no presumption of validity In contrast, no presumption of validity before the USPTO; it is the USPTO’s duty to before the USPTO; it is the USPTO’s duty to assure that the patentability requirements assure that the patentability requirements are met before issuing a patentare met before issuing a patent

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Morris (cont.)Morris (cont.)

““It would be inconsistent with the It would be inconsistent with the role assigned to the PTO in issuing a role assigned to the PTO in issuing a patent to require it to interpret patent to require it to interpret claims in the same manner as judges claims in the same manner as judges who, post-issuance, operate under who, post-issuance, operate under the assumption the patent is valid”the assumption the patent is valid”

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Morris (cont.)Morris (cont.) ““[T]he PTO applies to the verbiage of the [T]he PTO applies to the verbiage of the

proposed claimsproposed claims

[a] the [a] the broadest reasonable meaningbroadest reasonable meaning of the of the words words in their ordinary usagein their ordinary usage

[b] as they would be [b] as they would be understood by one of understood by one of ordinary skillordinary skill in the art, in the art,

[c] taking into account whatever [c] taking into account whatever enlightenment by way of enlightenment by way of definitions or definitions or otherwise that may be afforded by the otherwise that may be afforded by the written descriptionwritten description contained in applicant’s contained in applicant’s specification”specification”

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Phillips v. AWH Corp.Phillips v. AWH Corp.(Fed. Cir. 2005) ((Fed. Cir. 2005) (en bancen banc))

Confirmed the Confirmed the MorrisMorris standard standard

““The Patent and Trademark Office The Patent and Trademark Office (‘PTO’) determines the scope of claims (‘PTO’) determines the scope of claims in patent applications not solely on the in patent applications not solely on the basis of the claim language, but upon basis of the claim language, but upon giving claims their broadest giving claims their broadest reasonable construction ‘in light of the reasonable construction ‘in light of the specification as it would be interpreted specification as it would be interpreted by one of ordinary skill in the art’” by one of ordinary skill in the art’”

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BRI Standard TodayBRI Standard Today

ThenThen: broadest interpretation within : broadest interpretation within reasonreason

NowNow: broadest reasonable : broadest reasonable interpretation in light of the interpretation in light of the specification as it would be interpreted specification as it would be interpreted by one of ordinary skill in the artby one of ordinary skill in the art

SeeSee MPEP § 2111.01 MPEP § 2111.01

Justification for Justification for BRIBRI

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Amendment of ClaimsAmendment of Claims During prosecution, an applicant can amend During prosecution, an applicant can amend

the claims to obtain protection commensurate the claims to obtain protection commensurate with his inventionwith his invention Avoid cited prior artAvoid cited prior art Overcome written description or enablement Overcome written description or enablement

rejectionrejection

Applicant and Examiner work to define the Applicant and Examiner work to define the metes and bounds of the claim via the give and metes and bounds of the claim via the give and take of the rejection and response take of the rejection and response Amend claim language to convey specific meaningAmend claim language to convey specific meaning Provide a definition in the specificationProvide a definition in the specification

Prosecution should result in claims that are Prosecution should result in claims that are precise, clear, correct, and unambiguousprecise, clear, correct, and unambiguous

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Amendment of Claims Amendment of Claims (cont.)(cont.)

Only by according claims with the Only by according claims with the BRI can uncertainties in claim scope BRI can uncertainties in claim scope be removed before patent issuancebe removed before patent issuance

Serves the public by reducing the Serves the public by reducing the possibility that, after the patent is possibility that, after the patent is granted, the claims may be granted, the claims may be interpreted by the courts as having interpreted by the courts as having broader coverage than justified or broader coverage than justified or examined by the USPTOexamined by the USPTO

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Presumption of ValidityPresumption of Validity

After patent issues, patentee cannot After patent issues, patentee cannot amend during infringement litigationamend during infringement litigation—the patent is presumed valid under —the patent is presumed valid under 35 U.S.C. § 28235 U.S.C. § 282

The exchange that transpired in the The exchange that transpired in the USPTO gave birth to the presumption USPTO gave birth to the presumption of validityof validity

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Presumption of Validity Presumption of Validity (cont.)(cont.)

Because of the presumption of validity, Because of the presumption of validity, district courts construe claims to district courts construe claims to preserve validitypreserve validity

But, this rule of claim construction But, this rule of claim construction applies only where there is an ambiguity, applies only where there is an ambiguity, i.e.i.e., more than one possible construction. , more than one possible construction. SeeSee Phillips v. AWH Corp.Phillips v. AWH Corp., 415 F.3d , 415 F.3d 1303, 1327 (Fed. Cir. 2005)1303, 1327 (Fed. Cir. 2005)

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In re EtterIn re Etter(Fed. Cir. 1985) ((Fed. Cir. 1985) (en bancen banc))

Suggests inverse relationship between BRI Suggests inverse relationship between BRI and the presumption of validity, and the presumption of validity, i.e.i.e., where , where the presumption attaches, BRI does not applythe presumption attaches, BRI does not apply

After a patent issues, two situations exist:After a patent issues, two situations exist: The patent is presumed valid, placing the burdens The patent is presumed valid, placing the burdens

of proof and persuasion on the party that attacks of proof and persuasion on the party that attacks validityvalidity

The patentee cannot amend his claims. Claims The patentee cannot amend his claims. Claims are construed, if possible, to preserve themare construed, if possible, to preserve them

Before a patent issues, neither situation Before a patent issues, neither situation exists:exists: There is no presumption of validityThere is no presumption of validity The patentee can amend his claims. BRI appliesThe patentee can amend his claims. BRI applies

Extension of BRI Extension of BRI

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In re ReuterIn re Reuter(CCPA 1981)(CCPA 1981)

Applied BRI to reissue proceedingsApplied BRI to reissue proceedings

Little analysis; adoption of the logic of Little analysis; adoption of the logic of PraterPrater

Acknowledges that the USPTO applies BRI Acknowledges that the USPTO applies BRI “to reduce the possibility that, after the “to reduce the possibility that, after the patent is granted, the claims may be patent is granted, the claims may be interpreted as giving broader coverage interpreted as giving broader coverage than is justified.’” than is justified.’” In re PraterIn re Prater, 415 F.2d , 415 F.2d 1393, 1404-05 (CCPA 1969) 1393, 1404-05 (CCPA 1969)

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In re YamamotoIn re Yamamoto(Fed. Cir. 1984)(Fed. Cir. 1984)

Applied BRI to reexamination Applied BRI to reexamination proceedings. proceedings. SeeSee MPEP § 2258, Part MPEP § 2258, Part GG

Applicant in a reissue proceeding has Applicant in a reissue proceeding has a statutory right to amend his claims a statutory right to amend his claims to correspond with his contribution to correspond with his contribution over the art. over the art. SeeSee 35 U.S.C. § 305 35 U.S.C. § 305

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Miel v. YoungMiel v. Young(D.C. Circuit 1907)(D.C. Circuit 1907)

Applied BRI to interference proceedingApplied BRI to interference proceeding

““The reasonable presumption is that an The reasonable presumption is that an inventor intends to protect his invention inventor intends to protect his invention broadly; and consequently the courts broadly; and consequently the courts have often said that the scope of a claim have often said that the scope of a claim should not be restricted beyond the fair should not be restricted beyond the fair and ordinary meaning of the words, save and ordinary meaning of the words, save for the purpose of saving it.”for the purpose of saving it.”

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Kuppenbender v. RiszdorferKuppenbender v. Riszdorfer(CCPA 1939)(CCPA 1939)

BRI applies to an interference count if no BRI applies to an interference count if no ambiguity exists in the language of the countambiguity exists in the language of the count

If ambiguity exists, then resort to If ambiguity exists, then resort to specification to interpret the countspecification to interpret the count

SeeSee 37 C.F.R. 41.200(b) (2004) (“A claim 37 C.F.R. 41.200(b) (2004) (“A claim shall be given its broadest reasonable shall be given its broadest reasonable construction in light of the specification of construction in light of the specification of the application or patent in which it the application or patent in which it appears.”)appears.”)

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Ex Parte Papst-MotorenEx Parte Papst-Motoren(BPAI 1986)(BPAI 1986)

Single exception to USPTO’s application of BRI. Single exception to USPTO’s application of BRI. SeeSee MPEP § 2258, Part G MPEP § 2258, Part G

In a reexamination proceeding after the patent In a reexamination proceeding after the patent expires, BRI does not apply. Instead, the expires, BRI does not apply. Instead, the USPTO construes claims like the district courtUSPTO construes claims like the district court

The reason is because an applicant cannot The reason is because an applicant cannot amend the claims since the patent has already amend the claims since the patent has already expired. expired. SeeSee 37 C.F.R. § 1.530(d) (1986) 37 C.F.R. § 1.530(d) (1986) (providing that “[n]o amended or new claims (providing that “[n]o amended or new claims may be proposed for entry in an expired may be proposed for entry in an expired patent”)patent”)

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Papst-Motoren (cont.)Papst-Motoren (cont.)

When would the USPTO reexamine When would the USPTO reexamine an expired patent?an expired patent?

Reexamination requested 13 months Reexamination requested 13 months before patent expired, and Board before patent expired, and Board decision issued 13 months after decision issued 13 months after patent expiredpatent expired

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In Re TanIn Re Tan(Reexamination No. 90/006,696; pending (Reexamination No. 90/006,696; pending

CAFC Appeal)CAFC Appeal) Raises the Raises the Papst-MotorenPapst-Motoren rule as an issue rule as an issue

Facts similar to Facts similar to Papst-MotorsenPapst-Motorsen: : reexamination request, patent expired, Board reexamination request, patent expired, Board decision decision

Board declined to follow Board declined to follow Papst-MotorenPapst-Motoren rule, rule, reasoning that BRI applies because patentee reasoning that BRI applies because patentee had the opportunity to amend the claims during had the opportunity to amend the claims during the First Office action, which issued before the the First Office action, which issued before the patent expired patent expired

Briefing in progressBriefing in progress

Importance & Importance & Application of Application of

BRIBRI

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Why the BRI Standard Why the BRI Standard MattersMatters

Applicability of prior art and, in turn, Applicability of prior art and, in turn, rejections under 35 U.S.C. §§ 102 and 103rejections under 35 U.S.C. §§ 102 and 103

Written description and enablement Written description and enablement under 35 U.S.C. § 112, first paragraphunder 35 U.S.C. § 112, first paragraph

Whether claim particularly points out and Whether claim particularly points out and distinctly claims an applicant’s invention distinctly claims an applicant’s invention as required by 35 U.S.C. § 112, second as required by 35 U.S.C. § 112, second paragraphparagraph

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Standard of Review Standard of Review Claim construction is matter of law that Claim construction is matter of law that

the CAFC reviews the CAFC reviews de novode novo. . Cybor Corp. Cybor Corp. v. FAS Techs.v. FAS Techs., , Inc.Inc.,, 138 F.3d 1448, 1454 138 F.3d 1448, 1454 (Fed. Cir. 1998)(Fed. Cir. 1998)

But, since USPTO gives claims their But, since USPTO gives claims their

broadest reasonable interpretation, broadest reasonable interpretation, CAFC reviews the “reasonableness” of CAFC reviews the “reasonableness” of the USPTO’s interpretation. the USPTO’s interpretation. In re In re MorrisMorris, 127 F.3d 1048, 1055 (Fed. Cir. , 127 F.3d 1048, 1055 (Fed. Cir. 1997)1997)

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In re BuszardIn re Buszard(Fed. Cir. 2007)(Fed. Cir. 2007)

Claim 1: A flame retardant composition Claim 1: A flame retardant composition comprising . . . comprising . . . a flexible polyurethane foam reaction mixturea flexible polyurethane foam reaction mixture

USPTO construed “flexible polyurethane foam” USPTO construed “flexible polyurethane foam” to mean “any reaction mixture which produces, to mean “any reaction mixture which produces, at least ultimately, a flexible polyurethane at least ultimately, a flexible polyurethane foam” such that a “flexible polyurethane foam” foam” such that a “flexible polyurethane foam” would encompass a rigid foam productwould encompass a rigid foam product

Applicant argued that a “flexible polyurethane Applicant argued that a “flexible polyurethane foam” cannot include a rigid polyurethane foam” cannot include a rigid polyurethane mixture; the two mixtures are chemically mixture; the two mixtures are chemically different different

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Buszard (cont.)Buszard (cont.)

Was USPTO’s construction Was USPTO’s construction reasonable?reasonable?

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Buszard (cont.)Buszard (cont.)

CAFC: NoCAFC: No

““No matter how broadly ‘flexible foam No matter how broadly ‘flexible foam reaction mixture is construed,’ it is not reaction mixture is construed,’ it is not a rigid foam reaction mixture”a rigid foam reaction mixture”

““[I]t is not a reasonable claim [I]t is not a reasonable claim interpretation to equate “flexible” with interpretation to equate “flexible” with “rigid,” or to equate a crushed rigid “rigid,” or to equate a crushed rigid polyurethane foam with a flexible polyurethane foam with a flexible polyurethane foam”polyurethane foam”

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Buszard (cont.)Buszard (cont.) Implication: Prior art reference directed Implication: Prior art reference directed

to a rigid foam product is not anticipatory to a rigid foam product is not anticipatory

““Only by mechanically crushing the rigid Only by mechanically crushing the rigid product into small particles is it rendered product into small particles is it rendered flexible, as a rock can be mechanically flexible, as a rock can be mechanically crushed to produce particles of sand”crushed to produce particles of sand”

Reversed the Board’s anticipation Reversed the Board’s anticipation rejectionrejection

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Buszard (cont.)Buszard (cont.)(J. Prost dissent)(J. Prost dissent)

Board’s interpretation was broad, but not Board’s interpretation was broad, but not unreasonableunreasonable

Specification states: Specification states: ““[t]he flexible polyurethane foam compositions . . . [t]he flexible polyurethane foam compositions . . .

according to the present invention include according to the present invention include allall well well known, industrial compositions.” (Emphasis added) known, industrial compositions.” (Emphasis added)

Description of how to make “[t]he flexible Description of how to make “[t]he flexible polyurethane foam compositions” covers how to polyurethane foam compositions” covers how to make rigid polyurethane foam compositionsmake rigid polyurethane foam compositions

No evidence in the record of how a skilled No evidence in the record of how a skilled artisan would define “flexible polyurethane artisan would define “flexible polyurethane foam” foam”

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In re BigioIn re Bigio(Fed. Cir. 2004)(Fed. Cir. 2004)

Claim 1: A “hair brush” comprising: . . .Claim 1: A “hair brush” comprising: . . .

USPTO construed “hair brush” broadly to mean USPTO construed “hair brush” broadly to mean brushes used for human hair on the scalp as well brushes used for human hair on the scalp as well as brushes used for hair on other animal parts as brushes used for hair on other animal parts (e.g., human facial hair, human eyebrow hair, pet (e.g., human facial hair, human eyebrow hair, pet hair) hair)

Applicant argued that “hair brush” was limited to Applicant argued that “hair brush” was limited to brushes for the scalp hair onlybrushes for the scalp hair only

For support, Applicant pointed to “Objects of the For support, Applicant pointed to “Objects of the Invention,” which discussed an “anatomically Invention,” which discussed an “anatomically correct hairbrush” for brushing scalp haircorrect hairbrush” for brushing scalp hair

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Bigio (cont.)Bigio (cont.)

Was USPTO’s construction Was USPTO’s construction reasonable?reasonable?

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Bigio (cont.)Bigio (cont.) CAFC: YesCAFC: Yes

““Hair” preceding “brush” does not limit Hair” preceding “brush” does not limit claim to any particular kind of hair (claim to any particular kind of hair (e.ge.g., ., scalp hair)scalp hair)

Hair brush may encompass not only scalp Hair brush may encompass not only scalp hair but any kind of hair (hair but any kind of hair (e.ge.g., facial hair)., facial hair)

Board correctly did not import limitation Board correctly did not import limitation from specification, from specification, i.e.i.e., “Objects of the , “Objects of the Invention”Invention”

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Bigio (cont.)Bigio (cont.)

Implication: Board could apply Implication: Board could apply three references directed to three references directed to toothbrushes as prior arttoothbrushes as prior art

CAFC ultimately upheld obviousness CAFC ultimately upheld obviousness rejection based on those toothbrush rejection based on those toothbrush referencesreferences

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In re CortrightIn re Cortright(Fed. Cir. 1999)(Fed. Cir. 1999)

Claim 1 recites a method of “treating Claim 1 recites a method of “treating scalp baldness with an antimicrobial to scalp baldness with an antimicrobial to restore hair growth, which comprises restore hair growth, which comprises rubbing into the scalp [Bag Balm®]”rubbing into the scalp [Bag Balm®]”

USPTO construed “restore hair USPTO construed “restore hair growth” to mean returning the user’s growth” to mean returning the user’s hair “to its original state,” that is, a full hair “to its original state,” that is, a full head of hairhead of hair

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Cortright (cont.)Cortright (cont.)

Was USPTO’s construction Was USPTO’s construction reasonable?reasonable?

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Cortright (cont.)Cortright (cont.)

CAFC: No CAFC: No

USPTO’s construction should not be USPTO’s construction should not be so broad as to conflict with the so broad as to conflict with the meaning given to identical terms in meaning given to identical terms in other patents from analogous artsother patents from analogous arts

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Cortright (cont.)Cortright (cont.) USPTO’s construction of “restore hair growth” was USPTO’s construction of “restore hair growth” was

inconsistent with the definition it gave to that phrase in inconsistent with the definition it gave to that phrase in three other patentsthree other patents Patent 1Patent 1: “achieved a significant degree of : “achieved a significant degree of

improvement,” “partial filling-in and restoration of the improvement,” “partial filling-in and restoration of the bald spot,” and “fifty percent more hair in both the bald spot,” and “fifty percent more hair in both the frontal and middle sections of his scalp”frontal and middle sections of his scalp”

Patent 2Patent 2: “approximately 25% regrowth” and : “approximately 25% regrowth” and “increase in the number of new hairs . . . from 0 to 22”“increase in the number of new hairs . . . from 0 to 22”

Patent 3Patent 3: increased hair growth but not a complete : increased hair growth but not a complete baldness curebaldness cure

Skilled artisan would have construed “restore hair Skilled artisan would have construed “restore hair growth” to mean increasing the amount of hair grown on growth” to mean increasing the amount of hair grown on the scalp but not necessarily producing a full head of the scalp but not necessarily producing a full head of hairhair

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Cortright (cont.)Cortright (cont.)

Implication: Enablement rejection Implication: Enablement rejection reversed because specification reversed because specification taught the amount of Bag Balm® to taught the amount of Bag Balm® to apply and the amount of time in apply and the amount of time in which to expect resultswhich to expect results

When Worlds Collide: When Worlds Collide: Parallel USPTO & Parallel USPTO &

District Court District Court Proceedings Involving Proceedings Involving

Claim ConstructionClaim Construction

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Ethicon v. QuiggEthicon v. Quigg(Fed. Cir. 1988)(Fed. Cir. 1988)

U.S. Surgical sued Ethicon for patent U.S. Surgical sued Ethicon for patent infringementinfringement

Approximately 1 year later, Ethicon filed a Approximately 1 year later, Ethicon filed a reexamination request on the patentreexamination request on the patent

U.S. Surgical moved to stay the reexamination, U.S. Surgical moved to stay the reexamination, pending the outcome of the litigationpending the outcome of the litigation

USPTO granted the stay, and Ethicon sued USPTO granted the stay, and Ethicon sued

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Ethicon (cont.)Ethicon (cont.) CAFC required USPTO to resume the CAFC required USPTO to resume the

reexamination, rejecting the argument that the reexamination, rejecting the argument that the district court and reexamination proceedings district court and reexamination proceedings would be duplicativewould be duplicative

The reason is because USPTO and district court The reason is because USPTO and district court employ different standardsemploy different standards

District CourtDistrict Court USPTOUSPTO

Patent presumed Patent presumed validvalid

Patent not Patent not presumed valid; BRI presumed valid; BRI appliesapplies

Clear & convincing Clear & convincing evidence to show evidence to show invalidityinvalidity

Preponderant Preponderant evidence to show evidence to show invalidityinvalidity

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Ethicon (cont.)Ethicon (cont.) ““[W]e see nothing untoward about the PTO upholding [W]e see nothing untoward about the PTO upholding

the validity of a reexamined patent which the district the validity of a reexamined patent which the district court later finds invalid. . . . [I]f the district court court later finds invalid. . . . [I]f the district court determines a patent is not invalid, the PTO should determines a patent is not invalid, the PTO should continue its reexamination . . . . On the other hand, if continue its reexamination . . . . On the other hand, if a court finds a patent invalid, and that decision is a court finds a patent invalid, and that decision is either upheld on appeal or not appealed, the PTO either upheld on appeal or not appealed, the PTO may discontinue its reexamination”may discontinue its reexamination”

First in TimeFirst in Time Later in TimeLater in Time

USPTO—validUSPTO—valid D.C.—invalid D.C.—invalid

D.C.—not invalid D.C.—not invalid USPTO—continueUSPTO—continue

D.C.—invalid D.C.—invalid USPTO—stopUSPTO—stop

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In re Trans Texas Holdings In re Trans Texas Holdings Corp.Corp.

(Fed. Cir. 2007)(Fed. Cir. 2007) District court infringement proceeding District court infringement proceeding

with claim construction followed by with claim construction followed by reexamination proceeding before USPTOreexamination proceeding before USPTO

Disputed claim limitation was “responsive Disputed claim limitation was “responsive to the rate of inflation” to the rate of inflation”

District court construed the limitation to District court construed the limitation to mean “directly responsive to a market mean “directly responsive to a market indicator of prior actual inflation,” indicator of prior actual inflation,” i.e.i.e., a , a one-to-one relationshipone-to-one relationship

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Trans Texas (cont.)Trans Texas (cont.)

USPTO applied the BRI and construed USPTO applied the BRI and construed the limitation to mean not limited to a the limitation to mean not limited to a one-to-one relationship but instead one-to-one relationship but instead includes a delayed relationship in includes a delayed relationship in which adjustments are made in one which adjustments are made in one percent incrementspercent increments

Applicant argued that USPTO should Applicant argued that USPTO should have applied district court’s narrower have applied district court’s narrower construction construction

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Trans Texas (cont.)Trans Texas (cont.)

CAFC upheld USPTO’s construction, CAFC upheld USPTO’s construction, observing that USPTO applies BRI and observing that USPTO applies BRI and that BRI supported a broader that BRI supported a broader construction than accorded by the construction than accorded by the district courtdistrict court Nothing in the specification or prosecution Nothing in the specification or prosecution

history to require an immediate inflation history to require an immediate inflation adjustmentadjustment

Dictionary defines “directly” Dictionary defines “directly” inter aliainter alia as as “after a little while: shortly, presently”“after a little while: shortly, presently”

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In re Translogic Tech., Inc.In re Translogic Tech., Inc.(Fed. Cir. 2007)(Fed. Cir. 2007)

Confirms Confirms Trans Texas Trans Texas that USPTO is not bound that USPTO is not bound by a district court’s earlier (and narrower) by a district court’s earlier (and narrower) claim constructionclaim construction

Same facts as Same facts as Trans TexasTrans Texas: district court : district court infringement proceeding with claim infringement proceeding with claim construction followed by reexamination construction followed by reexamination proceeding before USPTOproceeding before USPTO

CAFC again upheld USPTO’s broader CAFC again upheld USPTO’s broader construction made under BRI standardconstruction made under BRI standard

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And the Curtain Falls . . .And the Curtain Falls . . .

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Contact Information & Contact Information & DisclaimerDisclaimer

USPTO Solicitor’s Office: (571) 272-USPTO Solicitor’s Office: (571) 272-90359035

Janet Gongola: Janet Gongola: janet.gongola@uspto.govjanet.gongola@uspto.gov

Thanks to Anish Gupta, detailee, for Thanks to Anish Gupta, detailee, for his fine research assistance in his fine research assistance in preparing this presentationpreparing this presentation