In re Smith International, Inc. (Sept. 26, 2017)
Even though the USPTO has been using the broadest reasonable interpretation (BRI) for over 100 years, guidance by the Federal Circuit is still needed. Recently, Federal Circuit found the application of the BRI by the Patent Trial and Appeal Board (PTAB) to be in error and reversed the PTAB’s claim construction as being in violation of the BRI.
Broadest Reasonable Interpretation
Similar to prosecution and inter partes review (IPR), the PTAB reviews claims under the BRI in light of the claim language and specification during reexamination. The In re Smith International, Inc. case arises from an ex parte reexamination related to oil drilling equipment in which the Examiner considered the term “body” to be generic and encompass other components. Based on the Examiner’s broad construction the claim was rejected as being anticipated, and the PTAB affirmed. The applicant argued that the term “body” does not encompass the other components and thus the claim is not anticipated.
Following previous guidance from the Federal Circuit in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015), the Federal Circuit found in In re Smith International that the PTAB and examiner are limited from construing the claim “so broadly that its constructions are unreasonable under general claim construction principles.” In particular, the Federal Circuit found the PTAB’s application of BRI was a legally incorrect interpretation that was “divorced from the specification and the record evidence.”
The Federal Circuit made this determination in part because the applicant used the term “body” consistently throughout the specification. The Federal Circuit held that the BRI must correspond with what and how the application describes the invention. While the PTAB had recognized that the “the specification describes the body as a discrete element separate from other elements,” the PTAB still found that there was no definition or disclaimer of the Examiner’s broad interpretation in the specification. This was found to be the error by the PTAB in applying the BRI.
Lack of Definition or Disclaimer is not part of BRI
As stated by the Federal Circuit, it is “not proper for the PTAB or an examiner to find that the lack of an express definition or disclaimer in the specification would result in ‘an adoption of a broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise.’”
Ultimately, the “correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.” In other words, the lack of a definition or disclaimer should not result in a broader reading of claim.
Guidance in Prosecution
Although there are several instances of the PTAB applying the Microsoft Corp. v. Proxyconn, Inc. decision to find the Examiner’s construction was unreasonably broad, applicants should still be on guard for overly broad construction during prosecution. When the USPTO during examination reads claim terms broadly to apply prior art, such a reading may be contrary to the Federal Circuit’s guidance which puts an emphasis on using the specification in the BRI inquiry. In drafting it is important to consistently use terms in describing the invention, and when appropriate, include judicious use of definitions.