Interpreting Claims in an Interference: USPTO Rules Now Follow the Law

The USPTO has cancelled 37 C.F.R. § 41.200(b). That rule required the BPAI to give claims their “broadest reasonable construction in light of the specification of the patent or application in which it appears” but applied only to interference proceedings.

In interferences, one party typically copies claims from the opposition’s application/patent in order to provoke an interference. The copy is then interpreted to have the same claim scope as the original. In Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009), the Federal Circuit held that Rule 41.200(b) was contrary to this rule of interpretation – thus, the rule was already dead from a legal standpoint.

75 FR 19558

36 thoughts on “Interpreting Claims in an Interference: USPTO Rules Now Follow the Law

  1. [please disregard the last post]

    disadvantages if the winner takes all.

    does the winner lose leverage in an exclusive licensing agreement when multiple parties are involved … does the winner have to forgo an early settlement if one of the parties wants to drag out the process and run up the costs to get the deal they want …

  2. disadvantages if the winner takes all.

    does the winner lose leverage in an exclusive licensing agreement when mutual parties are involved … does the winner have to forgo an early settlement if one of the parties wants to drag out the process and run up the costs to get the deal they want …

  3. “Rader missed a great chance to see the claim from the PTO’s perspective…”

    I think he did see it from the PTO’s perspective. The problem was the PTO’s perspective was unreasonable. Often times the PTO’s “perspective” is any one that allows them to reject the claims, no matter how silly they look in doing so. As long as the PTO continues to take this “perspective” they are going to find themselves embarrassed by the court.

    “I don’t consider construction of individual claim terms to make particularly good precedent.”

    Agreed.

  4. “That interpretation is not completely ridiculous…”

    So J. Rader should have ruled that any interpretation the PTO comes up with that is not completely ridiculous is the broadest reasonable interpretation?

    I think Randall got this one right.

  5. quick question:

    if the winner takes all in a multiple party interference what are the disadvantages to the winner if they are simply seeking a quick licensing agreement.

  6. Thanks again Ned.

    Sounds a bit messy, yet handling them all in one interference does seem like it’d be the most efficient approach by dealing with everything at the same time.

    Seems like there should be far more interferences initiated by the office based on 102 anticipation.

  7. IANAE,

    Either way it is unlikely that that particular combination of words will come up for appeal in a different case.

  8. I see your point, [but] the Court’s view is reasonable,

    The court’s view is reasonable. The Board’s view is reasonable. They were viewing different parts of the elephant.

    only the application of the last layer is finishing per Suitco.

    If that issue comes up in a different case, you’ll have to look at the spec and prosecution history of that case before splitting that particular hair. I don’t consider construction of individual claim terms to make particularly good precedent.

  9. IANAE,

    I see your point, the Court’s view is reasonable, i.e. preparing the surface to be finished =/= finishing. However what happens when one finishes using a multi-layer finish. I may contend that as long as the layers are joined prior to the application to the surface then it is finishing. However, when you apply the first layer to the surface, then the second layer to the first, etc. only the application of the last layer is finishing per Suitco.

  10. In the first case, Rader cites the Supreme Court for the proposition that claims must be interpreted in light of the specification for BRI. The case reversed a BPAI interpretation as unreasonable.

    Rader missed the mark on this one. It’s probably not his fault, because he’s presumably never prosecuted a patent application before.

    The claim limitation at issue was “material for finishing the top surface of the floor”. Rader focused on the terms “finishing” and “top surface”, but he completely ignored the word that was really important to the Board – “for”.

    When you claim “material for finishing…”, the PTO will pretty much always construe that as “material that could have been used for finishing”, or somesuch. In this case, the Board held that the material only needed to be structurally suitable for placement on the top surface. That interpretation is not completely ridiculous, but it looks that way if you gloss over the word “for” like Rader did and so many of us do every day. In so doing, Rader missed a great chance to see the claim from the PTO’s perspective, and maybe even opine on the PTO’s practice of interpreting “for” limitations this way.

    Had the applicant simply claimed “material finishing” instead of “material for finishing”, he could have saved himself a third trip to the Circuit.

  11. An interesting note: in the Suitco Surface case, the patent had twice before been at the Fed. Cir. in appeals from the District Courts. Twice before the Feds had construed the very same terms at issue in its appeal from the BPAI. It would be a wonder had they allowed the BPAI construction to stand as it was so far afield from the prior two constructions of the term by the Feds.

    What this suggests to your humble observer is that any PTO construction that varies materially from prior court constructions, particularly if it has been to the Federal Circuit, is just begging to be found unreasonable by the Feds.

  12. It does not apply to original claims or, I suspect, to added claims depending from original claims.

    Uh … how could it possibly be otherwise?

  13. Steve, I’ve heard of such a case. The three patents/applications are merged into one interference and the earliest inventor takes all.

  14. Note, check out two cases coming up, perhaps tomorrow. In re Suitco Surface and MBO v. Becton.

    In the first case, Rader cites the Supreme Court for the proposition that claims must be interpreted in light of the specification for BRI. The case reversed a BPAI interpretation as unreasonable.

    In the second case, the Feds provided an extensive discussion of the recapture doctrine, explaining that it applies to broadened claims in a reissue that seeks to claim surrendered subject matter that was surrendered anywhere, the subject case, its parent or any continuation or divisional. It does not apply to original claims or, I suspect, to added claims depending from original claims.

  15. Thanks Ned.

    As a related aside; have you (or anyone) ever heard of an interference involving more than two apps/patents; i.e. where one app/patent has one or more identical claims with two or more other later-priority-dated apps/patents?

    Is this even possible?

    Or would such an occurrence require a separate interference for each?

  16. like I said, and you pointed out, it’s a second language. And as Steve pointed out, a third.
    I guess I need a book on translation. I’ll see if I can find one. and when I do I will get back with you.

  17. Steve, that’s about it. Once the claims are interpreted, the next step is to see if those claim s are supported in the specification into which they are copied. If they are not supported, i.e., have supporting written description that supports them, then they cannot be copied and there is no interference in fact.

    In essence, if the two claims only appear to be claiming the same invention. But, in reality, they do not.

    Outside the PTO, the district court would be obliged to again interpret the claims in light of the specification into which they are not copied and issued. Since the claims are supported, that having been determined in the interference, this should be no problem and routine.

  18. “sarah, is English a second language to you?”

    No, 3rd (at best).

    Ned, more seriously, you say: “Depends on the issue. For prior art, the claim is interpreted according to the specification in which it appears. For written description support purposes, it is interpreted in light of the specification from which it is copied.”

    Are you saying then that the exact same claim(s) will/could end up having two different interpretations as the result of “going through” an interference?

    And if interpreted in light of the specification from which it is copied (for written description support), isn’t there a 2nd required step to then determine whether the spec of the app into which the claims were copied also supports them?

  19. I need to know where I can get a good Lawyer. Any suggestions? I understand that you were following the Law. And one truly had nothing to do with the other. Although shorty ain’t right in the head, and he took the wrong path.

  20. Ping you said you wanted me to have a good Christmas? I of course have a banging good reason to have one. So if you exploited me. Now turn about fair play?

  21. Depends on the issue. For prior art, the claim is interpreted according to the specification in which it appears. For written description support purposes, it is interpreted in light of the specification from which it is copied. The primary reason for the latter construction is to determine whether the copier had a right to copy the claim in the first place and whether there is an interference in fact.

    On this issue, Rader and I agree.

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