CAFC Makes Clear BRI Encompasses Plain & Ordinary Meaning
The USPTO's Broadest Reasonable Interpretation (BRI) encompasses an assessment of the plain and ordinary meaning of a patent claim term. As such, the Supreme Court's grant of certiorari in Cuozzo Speed v. Lee to review the Patent Trial & Appeal Board's (PTAB) application of BRI is puzzling.
As a reminder, the Cuozzo petition presented its BRI question as follows:
1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
Last week, in TriVascular, Inc. v. Samuels, the Federal Circuit explained that a BRI analysis necessarily includes an assessment of the plain and ordinary meaning, and that BRI is not an unfettered license to interpret claims without regard for the written description.
TriVascular's patent (6,007,575) was directed to an intraluminal stent claiming a "circumferential ridge." In endorsing the PTAB's construction, the CAFC explained the application of BRI (here) as including:
In construing claim terms, the Board must determine the scope of the claims by giving them their broadest reasonable construction in light of the specification as they would be interpreted by one of ordinary skill in the art. Cuozzo, 793 F.3d at 1279-80; compare Phillips v. AWH Corp.,415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history. Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed. Cir. 2015).
While the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); see In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1148-50 (Fed. Cir. 2012) (finding the Patent Office’s construction unreasonably broad because it was “unreasonable and inconsistent with the language of the claims and the specification”). Construing individual words of a claim without considering the context in which those words appear is simply not “reasonable.” Instead, it is the “use of the words in the context of the written description and customarily by those of skill in the relevant art that accurately reflects both the ‘ordinary’ and ‘customary’ meaning of the terms in the claims.” Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003).
In other words, both Philips and BRI apply the plain and ordinary meaning, as modified by the context of the specification and prosecution history. So, it would not seem that the actual doctrinal frameworks of BRI and Philips can be distinguished in any meaningful regard (apart from the fact that one proclaims to be the "broadest"). Therefore, Cuozzo would seem left with the argument that that the result of a "plain and ordinary meaning" BRI analysis is somehow different than one done under Philips. However, to the extent true, it is not any difference in framework that is the culprit— the difference is the decision makers. Simply stated, the judges of the PTAB leverage a technical perspective that judges of Article III courts rarely possess. Cuozzo, regardless of outcome, will not change the decision makers at the PTAB.
Finally, of note to practitioners, the Court indicates (footnote 2) that PTAB appeals advocating for a narrower claim interpretation will await the Cuozzo outcome.