Addressing an unpatentability decision of the Patent Trial and Appeal Board (PTAB or Board) that turned on claim construction, the US Court of Appeals for the Federal Circuit explained that the broadest reasonable interpretation (BRI) standard should not be treated as the broadest possible interpretation and instead must correspond to what is described in the specification. In re Smith Int’l, Inc., Case No. 16-2303 (Fed. Cir., Sept. 26, 2017) (Lourie, J).
In 2012, Smith International sued Baker Hughes for infringement of four patents, including one directed to a tool for oil and gas drilling. Baker Hughes thereafter initiated ex parte re-examination proceedings against the drilling tool patent and later filed two petitions seeking inter partes review (IPR). The IPR petitions were denied for substantively overlapping the pending ex parte re-examination.
In the ex parte re-examination, the patent examiner found certain claims unpatentable by broadly interpreting the claim term “body” to encompass a collection of elements. Based on that interpretation, the examiner pointed to a combination of elements in the prior art, including the actual “body” member as well as its mandrel and cam sleeve, which collectively showed what was required for the claimed “body.”
Smith International appealed to the PTAB, which affirmed the examiner. The PTAB reasoned that the examiner’s construction was acceptable because the specification did not explicitly define the term “body” and did not explicitly prohibit the examiner’s broad view. Smith International then appealed to the Federal Circuit.
The Federal Circuit reversed. It first reiterated that the BRI—the claim interpretation standard applied in both ex parte re-examination and IPR—could not be so broad that the interpretation is unreasonable or legally incorrect. The Federal Circuit also explained that the BRI cannot simply be “not inconsistent” with the specification, or be the broadest possible interpretation, but instead must correspond to, and be interpreted in light of, the specification’s description of the invention. The Court pointed to the patent specification’s consistent description of its body as distinct from other elements, such as its mandrel, piston and drive ring, to conclude that the term “body” did not include those other elements.