In re Cuozzo and the Broadest Reasonable Interpretation Standard – Should the Ability to Amend Be Relevant or Is It a Convenient Excuse?

Gerald M. Murphy, Jr. and Lynde F. Herzbach

Introduction:

On July 8, in In re Cuozzo, the CAFC denied en banc review of a prior panel decision that confirms the PTAB can use a different standard for interpreting claims than a district court.

The different standards were mainly allowed to continue based on the possibility of amending a patent’s claims before the PTAB that is not possible in a district court. However, it may be time to take a slightly different look at whether the PTAB and district courts must use the same interpretation.

The Denial of En Banc Review:

The majority, in a 6 to 5 split decision, suggested that the PTAB and a district court could use different standards in determining the meaning of a legal document – a patent. The majority and the dissent both spent a lot of time discussing the ease in which patent applicants can amend claims before a patent issues and the difficulties in amending claims after a patent issues. This line of reasoning is set forth to justify why the “Broadest Reasonable Interpretation” is the proper test for interpreting claims before a patent issues. However, the ability to amend claims in a post-grant proceeding, such as an inter partes review, should be irrelevant to the interpretation of terms used in the original patent claims.

A patent is often compared to a contract. A contract is the written, physical embodiment of an agreement or bargain and its purpose is to accurately and unambiguously represent the parties’ positions. Once a contract is signed, the meaning of the contract is fixed, and the meaning of the contract should not be different depending on who is reading it. Likewise, once a patent issues, the meaning of the patent should be set in stone and later developments should not affect the understanding of claim terms based on the relevant time period. In addition, and importantly, issued claim terms should not be interpreted one way by a court and another way by the PTAB. It is already difficult for the PTAB and courts to properly interpret claims. The problem is compounded by the fact that the CAFC is now endorsing different interpretations of an already issued patent based on who is interpreting the patent. The result of this difference in standards is judicial sanctioning of discrepancies in claim interpretation of already issued patents and encouragement of forum shopping based on such discrepancies.

In contrast to un-amended claims in an already issued patent, if a patent claim is actually amended in a post-grant proceeding, perhaps any new features in the amended claims or new claims should be given the BRI while the patent is involved in any post-grant proceeding. However, once that post-grant proceeding is finished, those new claims and new terms should be interpreted the same way in any subsequent proceeding, whether it be another subsequent PTAB proceeding or a district court litigation.

Conclusions and Suggestions:

For the time being, the PTAB, in reviewing patent claims, must use the Broadest Reasonable Interpretation. However, the PTAB may want to consider indicating in its decisions, when appropriate, that its claim construction is not only the Broadest Reasonable Interpretation, but also the only reasonable interpretation based on the intrinsic record and extrinsic evidence, when appropriate. Parties might find it prudent to make alternative arguments regarding the standard for claim interpretation until this issue is resolved.

It would be best for practitioners and decision makers if the same standard is used in interpreting issued claims regardless of forum. Once a patent issues, the meaning of the claim should be set in stone. Just like a final, signed contract, an un-amended patent means what it means and it should not mean something different depending on who is reading the document.