In a decision handed down on 20 June 2016 in Cuozzo Speed Technology v Lee, the US Supreme Court held that the Patent Trial and Appeal Board (PTAB) should really be adopting the broadest reasonable interpretation when interpreting the claims of a patent during proceedings.
During proceedings surrounding the validity of the claims of a patent, the meaning of the words which make up the claim can often be pivotal in determining the validity of the claims of a patent.
It is an often quoted tenet of patent law that the words which make up a claim should be given their natural meaning in accordance with what the person skilled in the art would understand, unless the patent gives basis for a more specific meaning. This is a useful feature of patent law and recognises the imprecise nature that language can have, in that terms can often be given slightly different meanings dependent upon their context.
Indeed, one of the things that can extend the prosecution of a patent or inter-parties proceedings relating to a patent is the debate between respective parties on the meaning of the terms of a claim and why a specific meaning gives a claim validity over prior art.
Patent trial and appeal board
In the USA, where the United States Patent and Trademark Office (USPTO) have rejected a patent application, an appeal can be made to the Patent Trial and Appeal Board (PTAB).
The PTAB is a body of the USPTO which can handle appeals relating to patent examiner rejections, inter-parties review of a patent, post-grant review of a patent and inventorship proceedings. The decisions can be appealed to the US Federal Court and the decisions of the federal court can be reviewed by the Supreme Court.
In a decision handed down on 20 June 2016 in Cuozzo Speed Technology v Lee, the US Supreme Court have held that the Patent Trial and Appeal Board (PTAB) should really be adopting the broadest reasonable interpretation when interpreting the claims of a patent during proceedings.
The broadest reasonable interpretation does not necessarily mean the broadest possible interpretation. The website for the USPTO gives guidance on what the broadest reasonable interpretation means. It sets out that the meaning given to a term in a claim must be consistent with the ordinary and customary meaning of the term, unless the term has been given a special definition in the specification, and must be consistent with the use of the claim term in the specification and drawings.
In this decision, Cuozzo argued that the Phillips standard on claim interpretation should be used. This is the standard used by the US district court. It holds that terms should be given the meaning they would have to a person of ordinary skill in the art in question at the time of the invention. This view was rejected by the US Supreme Court.
The decision of the US Supreme Court does not say that the US District Court is incorrect in using the Phillips standard but merely states that the PTAB is correct to use the broadest reasonable interpretation approach.
So what does this mean for applicants? Well, the broadest reasonable interpretation affords slightly more breadth to the interpretation of a claim than what is afforded by the Phillips approach, which is more consistent with what is held to be the view on claim construction in patent practice in Europe, and particularly the UK.
In the UK, we are very much directed by the courts to consider, when interpreting a claim, what the skilled person would understand a term to mean. The broadest reasonable interpretation directs that a term must be consistent with the ordinary and customary meaning of the term, unless the remainder of the description says otherwise, whilst making sure the interpretation is consistent with the use of the claim term in the specification and drawings. That is to say, the broadest reasonable interpretation appears to bypass the skilled person.
The PTAB, therefore, is directed to giving terms of a claim an ordinary and customary meaning — provided that meaning is consistent with what is taught by the description. However, a decision of the PTAB can be appealed to the US District Court, as an alternative to the Federal Court, where the Phillips standard is used. This gives the terms of a claim the meaning they would have to the skilled person — an arguably more constraining approach to claim interpretation.
In the short term, for patent applications already in the US patent system, applicants should note the possibility of a broader interpretation of claims by pursuing an appeal to the PTAB when a patent application has been rejected.
In the long term — for applicants who see obtaining protection in the US as a key part of their patent prosecution strategy — the individuals involved in the drafting of patent applications should note that the PTAB (and the US Supreme Court) will concentrate on the meaning of a term used in the specification and drawings, if it introduces a meaning which is inconsistent with the ordinary and customary meaning given to that term. That is to say, if a specific meaning is intended for a term, that meaning should be made clear from the start if it is important to the understanding of the invention — otherwise an ‘intended’ meaning would be ignored in favour of the ordinary and customary meaning of the term.