Pursuant to a granted request for ex parte reexamination, a patent belonging to the patentee was invalidated in view of the prior art. The patentee appealed the examiner’s rejection to the Patent Trial and Appeal Board (PTAB)—which upheld the rejection. Even though the patent expired during the pendency of the appeal, the PTAB analyzed the examiner’s construction of the claims using the broadest reasonable interpretation (BRI) standard. The PTAB explained that this was appropriate because the patent had not expired before the examiner rejected the claims, and thus, the patentee had the opportunity to amend them. 

The patentee appealed the PTAB decision upholding the examiner’s rejection on the grounds that the PTAB improperly used BRI instead of the Phillips standard for its analysis of the examiner’s claim construction. The patentee argued that this overly broad construction permitted the PTAB to rely on otherwise unavailable prior art references in upholding the examiner’s rejection of the claims.

The Federal Circuit agreed with the petitioner that the PTAB took the wrong approach to claim construction, holding that once a patent expires during a reexamination proceeding, the USPTO should apply the Phillips standard for claim construction—even if that leads the PTAB to apply a different standard than that used by the examiner. The Federal Circuit explained that in many cases, using the Phillips standard will not lead to a different claim construction than BRI; if anything, the PTAB will be less likely to produce additional grounds of rejection when required to use the narrower Phillips standard.

Notwithstanding the incorrect approach used by the PTAB, the Federal Circuit nevertheless rejected the patentee’s proposed claim constructions and affirmed the PTAB’s rejection of the claims in view of the prior art. The Federal Circuit explained that in this case, the PTAB’s improper use of BRI in construing the claims did not produce a different result than the Federal Circuit’s use of Phillips. Rather, even under the Phillips standard, the patentee’s arguments for a narrow claim construction were not supported by the specification of the patent. Accordingly, the Federal Circuit affirmed the PTAB’s rejection of the claims of the patent as ultimately correct.