Cuozzo Amicus Briefs from IPO, AIPLA, BIO, et al., all arguing against Broadest Reasonable Interpretation of Claims During IPR proceedings

By Dennis Crouch

Following a 6-5 split by the Federal Circuit, Cuozzo filed a petition for writ of certiorari – asking two important questions (as paraphrased by me):

  1. During a post-issuance inter partes review (IPR) proceeding, is it proper for the Patent Trial & Appeal Board (PTAB) to construe claims according to their “broadest reasonable interpretation” rather than their proper construction being applied in court?
  2. Is the PTAB’s decision whether to institute an IPR proceeding judicially unreviewable even if the PTAB exceeds its statutory authority in instituting the IPR?

See Cuozzo Takes IPR Challenge to the Supreme Court.

Eight different friend-of-the-court briefs have now been filed and the U.S. Government’s responsive brief is due December 9, 2015.

The majority of the briefs focus solely on the claim construction issue and make three basic arguments:

  1. Policy: IPRs are designed as validity judgments rather than a new examination of the patent; and claim amendments are almost always prohibited. Because IPRs are acting in parallel with court proceedings, the different standards create instability and uncertainty while using the same claim construction as an infringement-court would promote efficiency. All this undermines the PTO’s reasons justifying application of BRI construction rather than standard construction.
  2. Deference: Congress did not give the PTO rulemaking authority to decide to implement BRI in these Inter Partes Review proceedings and as a result, the agency’s interpretation should not be given administrative law deference.
  3. Conflict: The broad standard effectively negates the presumption of validity associated with each and every patent right. The broad standard subtly justifies the PTO to avoid the preclusive effect of prior court decisions.

One amicus brief (NYIPLA) also argued that the Federal Circuit should be able to review whether the PTO exceeded its authority in instituting an IPR, despite statutory language stating that the decision is not appealable. NYIPLA argues that the statute simply bars interlocutory appeals, but that the statute does not “narrow the issues that can be raised in an appeal” of a final written decision under §319.

= = = = =

I’ll note here that none of the briefs at the petition stage raise the MCM/Cooper/Affinity arguments that the whole IPR proceedings are unlawful because “a patent, upon issuance, is not subject to revocation or cancellation by any executive agent, including by any part of the USPTO.” Citing McCormick Harvesting Mach. Co. v. Aultman, 169 U.S. 606 (1898). In McCormick, the Supreme Court wrote:

[W]hen a patent has … had affixed to it the seal of the Patent Office, it has passed beyond the control and jurisdiction of that office, and is not subject to be revoked or cancelled by the President, or any other officer of the Government. It has become the property of the patentee, and as such is entitled to the same legal protection as other property. . . . The only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever [without the patentee’s consent], is vested in the courts of the United States, and not in the department which issued the patent.

I would expect that, if the petition here is successful, some parties will file briefs that collaterally attach the IPR framework and to soften the Supreme Court for the eventual petitions.

= = = = = =

Briefs

119 thoughts on “Cuozzo Amicus Briefs from IPO, AIPLA, BIO, et al., all arguing against Broadest Reasonable Interpretation of Claims During IPR proceedings

  1. I have yet to read an argument persuading me there is a substantive difference between BRI and the so-called “one correct interpretation, alternatively the interpretation gleaned under Philips and its progeny.

  2. Here is another interesting ignored fact: Contrary to some of these current assertions, IPRs are NOT the only post-grant PTO proceeding in which issued patent claims are removed under a BRI claim interpretation standard, and in which amendment of subject patent claims is difficult.* That has gone on in thousands of PTO interferences for more than a century!

    *A far more limited patent claim amendment opportunity than in an IPR . Note, e.g., MPEP Section 2308.02 “Added or Amended Claims [R-08.2012]
    … A patentee may file a reissue application in support of a motion to add or amend a claim. ..”

    1. Why are you posting a misleading statement such as this?

      Clearly, your view on this matter is necessarily – and materially – altered by the replies afforded by Ned Heller on the subsequent opportunity for a full Article III “vetting.”

      Ig nored fact….?

      No.

      Please do not post partial truths, for they are the stuff of forked tongues.

    2. Paul, a reissue is a new patent application. If the patentee wants the new patent, he pays the issue fee and surrenders the old.

      This is not a post grant proceeding in the sense you state.

  3. Dennis, here is something that badly needs one of your statistical surveys, or at least a PTAB statistical inquiry? On one side are frequent allegations that it is impossible to amend claims in an IPR, and thus BRI is improper. A major issue for the subject cert petition. So far, few IPRs issuing with amended claims have been publicly noted. But, it is unknown in how many IPR’s claim amendments have actually been proposed but refused?
    Some IPR practitioners say that the risk of non-infringement and “intervening rights” is more of a discouragement of claim amendments than the IPR system. It is also argued that most of the refused claim amendments are refused because they were not even attempted until near the end of the IPR proceeding’s statutory deadline, even though the patent owner had the prior art in hand and explained from the beginning.
    Also, there has not yet apparently been any Fed. Cir. IPR appeal decision raising a dispute about an IPR refused claim amendment?

    [This is not taking into consideration reported pending rule changes to make claim amendments easier in IPRs.]

    1. Some IPR practitioners say that the risk of non-infringement and “intervening rights” is more of a discouragement of claim amendments than the IPR system.

      Of course that’s true. And the explanation for the lack of most other amendments is that the claims are irredeemable j nk, i.e., there was no patent-worthy innovation in the application. That’s commonplace but you’ll never hear the IPR-bashers admit it because in their world a 70% allowance rate for patent applications drafted by people who believe they “invented” the concept of shoving an ad in your face is some sort of natural law rather than what everyone else understands it be (abject incompetence or worse).

    2. PM the risk of non-infringement and “intervening rights” is more of a discouragement of claim amendments than the IPR system.

      Of course that’s true. And the explanation for the lack of most other amendments is that the claims are irredeemable baloney, i.e., there was never any patent-worthy innovation in the application. That’s a normal situation but you’ll never hear the IPR-bashers admit it because in their world a 70% allowance rate for patent applications drafted by people who apparently believe they “invented” communication over the Internets is some sort of natural law rather than what everyone else understands it be (evidence of agency incompetence or worse).

    3. I think folks that try to “prove” the patentability of new claims in a IPR are fools. They should file a reissue application if an IPR is instituted citing the institution decision for grounds. They can then file all the amended claims they want and have them examined properly.

      1. Ned,

        That is very clever. The only fly in the ointment I can see is:

        35 U.S.C. 315 Relation to other proceedings or actions.
        (d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a) [derivation proceedings], 251, and 252 [reissue], and chapter 30 [reexamnation], during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.

        I haven’t check the Rules.

        1. Troubled, we had a reissue put on hold pending. But the very same claims that were subject to the IPR were pending.

          I think the Board may allow examiners to consider new claims with additional limitations.

          1. Ned,

            For completeness, I checked 37 CFR 42.122(b). Apparently, petitioner can also seek joinder, but no later than one month after institution.

      1. That sounds about right, but the relevant question is in how many more IPRs were claim amendments actually timely requested and refused?

        1. As understood, no claim amendment was ever requested in the subject Cuozzo IPR, and Cuozzo not even objecting to BRI as being too broad a claim scope reading. Rather Couzzo was [illogically] arguing that a BRI claim reading was too narrow to suit their infringement case. Thus, I am still waiting for someone to explain why this cert petition and these supporting amicus briefs are not an improper cert request for a legal “advisory opinion” since Cuozzo can have no personally affected benefit or interest [no case or controversy] in this appeal outcome?
          As a reminder, no claim broadening claim amendment has ever been legal in any post-grant proceeding other than a reissue filed less than two years from the patent issue date.

        2. That sounds about right, but the relevant question is in how many more IPRs were claim amendments actually timely requested and refused?

          Are you sure we shouldn’t be dividing that number (four) by the number of amendments allowed in other proceedings over the same time period?

          Just kidding.

  4. Since the argument based on the 1898 Sup.Ct. decision in McCormick Harvesting Mach. Co. v. Aultman still continues, it is worth looking at what it was actually deciding. Namely the statutory interpretation of the then reissue statute. Specifically, holding that when a patent owner abandons a reissue [in which presumably claims were rejected] can the patent owner get back intact the original patent with the original claims? The decision even refers to a prior reissue statute which might have had a different result? There is no suggestion in this decision that Congress could not ever constitutionally enact a statute [like the reissue statute, the interference statutes, the two reexamination statutes, or the AIA] that would have allowed the PTO to reject or cancel original patent claims of an issued patent. In fact, had that not been occuring in interference decisions from long before this McCormick Harvesting decision?

    1. Paul,

      “Upon application being made for such reissue the Patent Office was authorized to deal with all its claims, the originals as well as those inserted first in the application, and might declare them to be invalid, but such action would not affect the claims of the original patent, which remained in full force, if the application for a reissue were rejected or abandoned.”

      McCormick at 612.

      The original patent is not surrendered upon application for reissue. It is surrendered and then replaced by the reissue patent. There are two different patents involved.

      In the case of reexaminations, the claims being reexamined and cancelled are the claims in the original patent.

      1. Yes Ned, that is consistent with what I had said, and further supports a position that McCormick was not actually deciding the constitutionality of a statute like the AIA.
        But perhaps this entire issue could be held in abeyance on this blog to reduce all the speculative clutter? A decision from the Fed. Cir. should be coming soon on your fully briefed and fully argued attack on the constitutionality of all AIA post grant proceedings [plus all reexaminations since D.C. civil action alternatives to direct Fed. Cir. appeals ended] in your MCM Portfolio Company v. Hewlett Packard Company Fed. Cir. Case No. 15-1091 filed 1/21/15. Plus the other, Cooper v. Lee, constitutional challenge.

        1. Paul, agreed. It is just that most patent attorneys, if not most attorneys, seem completely unfamiliar with this area of con law. That is why I respond.

        2. Paul,

          While you and Ned are free to choose or not choose to discuss the topic, your own choice of words here (“clutter”) belies the fact that you continue to proselytize along a certain mantra, and you are entirely unwilling to recognize the import of any counter points presented.

          Further, your “spin” on McCromick yields a twisted version of things.

          Of course, McCromick – having been decided prior to the AIA – cannot be speaking to the issue brought on by the AIA (your “not actually” is a false spin).

          The points being raised are not in fact “consistent with” what you are saying. The false appearance of “we really agree” serves no one.

          Either the counter points are valid or they are not. There is NO reason to cut you any slack on your desire to “stop the discussion” because you have no ready answer to those counter points.

          That’s a lot like your unwillingness to actually offer a cognitive position on the plain fact that this law (the AIA) was expressly made un-separable, and thus NO “interpretation” by the judicial branch is available to put in effect the clear opposite of what Congress decided.

          That’s another thing that you want to disagree with, but don’t want to discuss.

          1. Sorry, I did not mean to deprive you of your hostility outlet, I was merely making the logical and obvious point that all the extensive personal speculations about the constitutionality of IPRs will soon become a complete waste of time with that question about to be actually decided by the Courts.

            1. hostility outlet

              LOL – nice attempt at diversion.

              You want to actually note the substance of my post calling you out for your continued advocacy?

              Oops.

              Your “merely making the logical and obvious point” was not so “merely” – and for the reasons I gave.

              Funny, how you don’t mind yourself continuing to plug away at something that you call “a complete waste of time, but only want to “beg off” from any dialogue when it comes to points that you have no answers to.

              (and yes, I just won another bet with my Big Man in Vegas that you would continue to actually avoid making any reasonable legal counter argument when you have the chance – thanks for that!)

  5. There was an amendment floating around Congress a while ago that was proposing that Markman claim constructions need to be used during post grant proceedings. The amendment died. So will this petition.

    There is your congressional intent.

    See link to patentspostgrant.com

        1. In statutory interpretation such non-action is rarely dispositive. If the court finds that BRI is correct, it will cite the dead legislative attempt. If the court finds that BRI is not correct, it will dismiss the dead legislative attempt as proof of nothing.

          See, e.g.:

          As much as they might show congressional approval for Dr. Miles, they might demonstrate a different proposition: that Congress could not pass legislation codifying the rule and reached a short-term compromise instead

          LEEGIN CREATIVE LEATHER PRODUCTS, INC.,
          v.
          PSKS, INC., 551 us 877 (US 2007)

  6. The McCormick argument is interesting, but seems dubious. Congress can define the scope of a patent, and can make the grant of a patent conditional on things like validity, paying maintenance fees, and the possibility of post-grant proceedings to take the patent away or reduce its scope. I can see the argument that IPR proceedings are unconstitutional for patents that issued before those proceedings existed — IPRs weren’t part of the deal when the patent issued, and for Congress to retroactively devalue or take back patents in this way might be a taking. But for people applying for patents now, IPRs are part of the deal. I’m probably missing something.

    1. As I have explained, the section of law that details what a patent right IS – was not changed by Congress in the AIA.

      What you seek to do is change the heart of the nature of what a patent IS, but you cannot reconcile that such is just not what happened.

      This is, of course, a different argument as to Congress may do, and you should not allow yourself to be confused by the difference.

      1. the section of law that details what a patent right IS – was not changed by Congress in the AIA.

        That’s right. Even before the AIA, a “patent” was an agency re-examinable instrument subject to forfeiture upon a showing that it was improvidently granted.

        1. Right. With reexams available before the AIA and IPRs available after, I’m not sure what the plausible version of the McCormick argument is.

                1. The McCormick Harvesting argument was shot down in Patlex.

                  “The holding of McCormick Harvesting may also be distinguished, in view of Congressional intent to provide a separate procedure for reexamination while preserving the reissue practice. The purpose of reissuance of patents is to enable correction of errors made by the inventor, at the initiative of the inventor. The reexamination statute’s purpose is to correct errors made by the government, to remedy defective governmental (not private) action, and if need be to remove patents that should never have been granted. We do not read McCormick Harvesting as forbidding Congress to authorize reexamination to correct governmental mistakes, even against the will of the patent owner. A defectively examined and therefore erroneously granted patent must yield to the reasonable Congressional purpose of facilitating the correction of governmental mistakes”

                  It refuses to die.

                2. See also Joy Tech. Inc. v. Manbeck, 959 F.2d 226, (Fed. Cir. 1992) (affirming Patlex and reiterating that patents are public rights that can be adjudicated in article I tribunals)

                3. Yung, if one assumes a patent is a public right, Joy was correctly decided.

                  Now look at Lockwood, post 8.2.1.1 below, a later case, where Nies and two other members of the Federal Circuit said that Lockwood necessarily overturned Patlex.

                  Post 8.2.1.1.

                4. Ned,

                  As I already pointed out, all you are seeing here is a rehash of those comments already made in the previous discussion threads.

                  Your rejoinders there are the same ones here.

                  How does looking at others crank up the Merry Go Round make you feel?

                5. anon, there really is no substitute to actually reading Murray’s Lessee, Granfinanciera and Stern v. Marshall.

                  What seems obvious and self-evident becomes less so afterwards.

                6. Ned,

                  All that I am pointing out is that those arguing against your position here are the same ones (with the same arguments) that argued against your position previously.

                  They have not taken your counter points into view – even as you have provided them previously.

                  All that they are doing is repeating their views – as if you had never responded to those selfsame views previously.

                  A monologue – and certainly not a dialogue.

                  Repeat this selfsame dance, oh about a million times, and see what type of ec(h)osytem develops…

                  😉

    2. dcl, I would agree with this but for Murray’s Lessee and the fact that patent revocation proceedings were known at common law and had a right to a trial by jury.

        1. anony, yes. That actually was the rationale of Patlex sustaining re-examinations and is the rationale of the government in the current litigation. The counter is that in Murray Lessee, the Supreme C0urt held that actions litigated in the courts of England at common law could not be removed from Article III courts. in Stern v. Marshall, Murray’s Lessee was reiterated as still being a check on the public rights doctrine.

          You also might want to check out the dissent to en banc by Judge Nies and two other judges in Lockwood. There she said that the decision in Lockwood necessarily overruled Patlex. If a patentee had a right to a trial by jury for validity, conducting invalidity trial in the patent office was inconsistent with and denied that right to a trial by jury.

          Murray’s Lessee link to scholar.google.com

          Stern v. Marshall link to scholar.google.com

          Lockwood link to scholar.google.com

          1. Oh, I see. You should just share links to the MCM / Cooper / Affinity briefs.

            I’m surprised that your commentary here hasn’t ended up in a DOJ brief yet.

            1. Well, they quote me all the time anony. They did so in their argument regarding 314(d). I made a pretty elaborate and apparently a convincing argument that institution decisions were not appealable from a final decision like everyone was assuming at the time we filed our Mandamus. That appeared to have changed Justice’s minds on the whole issue, and they cited our brief in support of their argument regarding non appealablity of institution decisions.

    3. Also DCL, you aren’t missing anything. Many IP owners have been unhappy with the result in Patlex and merely wish to re-litigate it here.

      1. Yung, but you seem not to recognize that the Supreme Court has doubled-down itself. Stern v. Marshall. Actions that were litigated at common law are not public rights and cannot be withdrawn from the courts, period. End of discussion.

        The inconsistency between Patlex and the Supreme Court has even been recognized by members of the Federal Circuit itself in Lockwood.

            1. ANYTHING by Mr. Lemley is suspect.

              I did not get past the first few pages without noting a material omission in his “dogma:” laws affecting property rights also call into mind certain considerations (Mr. Lemley has attempted to divorce consideration based solely on criminal nature of things).

              You would do far better YL to base your views on a better foundation than one who so evidently is already biased anti-patent.

                1. It is NOT an “attack on the speaker” so much as the context of that very same speaker twists things.

                  So no YL, my “ad hominem” is not something that you can simply “dismiss.” It is a critical evaluation of the provider of the material and noting that THAT provision is indeed suspect.

          1. Read Mowry v. Whitney link to scholar.google.com

            “It will be observed that in the case of a conflict under two patents granting the same right, the scire facias may, according to the authorities cited, be brought in the name of one of the patentees, but in the other cases, when the patent was obtained by a fraud upon the king, by false suggestion, or where it was issued without authority,”

  7. What bothers me is the constant refrain in the amicus briefs that broadest reasonable interpretation is quite fine in a reexaminations but somehow not okay in IPRs when the issue in both is whether a claim in an issued patent is valid or invalid.

    In both cases we are dealing with issued patents. Reexaminations result in a certificate that cancels claims found to be invalid. That is what IPRs do as well.

    The right to amend certainly is why BRI is acceptable during regular examination before the patent issues. But after the patent issues, the patent is the property of the patent owner and we are dealing with legal rights. If the patent owner is forced to amend because of claim construction, he will lose all damages occurring prior to the issuance of the re-examination certificate. This causes significant harm to the patentee that cannot be ignored but is ignored by every single one of these amicus briefs.

    All in all I have nothing in common with these amici who fail to see the big issue and undermine their position by ignoring the reality of what is going on in both reexaminations and IPRs. They are trying to be just a bit too nuanced. Focusing on the right to amend is absurd. It makes their position illogical.

    This reminds me of another position that has recently been argued that even though McCormick Harvesting held that the government cannot cancel or revoke an issued patent as a result of a reexamination, that being exclusively for the courts, nevertheless defended reexaminations as being something acceptable under McCormick Harvesting. Please explain that to me, and do so slowly that I may understand.

    1. a “right” versus what the (Article I) court deigns to grant…

      As to the “They are trying to be just a bit too nuanced” I do have to chuckle, Ned, given your own predilections as to parsing what fits your own mantras and “nuancing” away those things that do not fit.

    2. Ned,

      I think IPRs are unfair, but I am also bothered by two briefs that I read.

      From the IPO brief, after discussing some procedural standards in 35 U.S.C. 316, “Congress intended “court-like” standards for assessing validity to apply, including the plain and ordinary standard for determining the proper construction of patent claims.” But:

      35 U.S.C. 316 Conduct of inter partes review.
      (e) EVIDENTIARY STANDARDS.—In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.

      A Court-like intent should have recited clear and convincing evidence.

      Both it and the AIPLA brief complain of inconsistent results. In court we have Phillips claim construction (with no chance to amend) with a requirement for clear and convincing evidence to invalidate (and maybe help from a jury). In IPRs we have BRI (with a theoretical chance to amend) with only a preponderance of the evidence required to invalidate. Given this disparity, it is not inconsistent to have a valid patent in court, but not at the PTAB.

      What would be inconsistent is, if the IPR is supposed to be court-like, we should see the same results. But then we get into your complaint that the PTAB is not a court.

      1. One possible answer to this is the presumption of validity. In an ordinary court suit, there is no cloud over the litigated patent, so it has a presumption of validity and hence a higher burden of proof to invalidate it. A proceeding requires an initial showing, a prima facie case, so to speak.

        That said, there’s no reason why we can’t just accept that Congress made a policy decision and changed the patent scheme to the disadvantage of some and the advantage of others.

        Another way to look at it. Congress could very well have removed the presumption of validity in all contexts, including federal court. They effectively did remove the presumption, but in a limited context.

        1. H.O., Congress definitely undermined the entire patent system with IPRs. Pharma and Bio took their eye off the ball and the discussion of expectation in these briefs by Pharma and everyone else, and in the recent Johnson (IPO president) interview by Gene, shows only that he an many others were lulled to sleep by the propaganda produced by the backers of the AIA.

          The damage is done. The only way forward is to win the constitutional argument. Congress is not going to repeal IPRs.

        2. HOPB,

          You still run into the problem that Congress did NOT change the law in the critical section dealing with patents as….

          (wait for it)

          (wait for it)

          … property.

          Given that, even Congress cannot write laws that violate such things as the Takings clause in dealing with property.

          1. Subject to the provisions of this title, patents shall have the attributes of personal property. 35 USC 261.

            What is SUBJECT TO?
            1. Conditional or dependent on something. 2. Being under domination as of a authority or government subject to the whims of the boss.3. Exposed or open to undesirable or unfortunate criticism. 4. The necessity of undergoing something. 5. Liable or prone to suffer something.
            (Black’s Law Dictionary)

            Patents are property conditional on outcome of IPR per statutory construction.

            1. “Title” YL, that being the subject of patents.

              You are trying WAY too hard to not understand something very direct and simple.

              Note that this section was unchanged by Congress – the meaning predates that which was tacked on. Read my other posts concerning the ability to do something with property that is protected by other portions of the constitution (i.e. takings): Congress itself – even being the branch of the government authorized to write the statutory law that is patent law – cannot violate other portions of the constitution in their efforts.

              This is a basic understanding of the structure of our legal system.

              Just because Congress passes a law within its ambit of allocated authority, does not mean the law passes constitutional scrutiny.

                1. Yung, reexaminations:

                  So long as the patent owner had a right to trial de novo and a right to a trial by jury there, yes, they probably were constitutional.

                  But when the AIA removed the right to a trial de novo for reexaminations, they removed the only possible support for their constitutionality.

                2. You paint far too broadly and would need to recognize that the reexamination and interference proceedings have different elements than which is under discussion here.

      2. Troubled, thanks for your observations. There never was any intention to provide court-like procedure in the PTO despite the public statements about a low cost alternative to litigation. The lower standard of proof proves this.

        The fact that Pharma and Bio did not pay attention is probably because of the fact that they had lot of confidence in Armitage. But, as we see, the AIA is strongly unfriendly to patents in any number of ways. I have a good idea why this happened and it probably has a lot to do with the PTO. Getting legislation through congress entails a lot of negotiations among interested parties, including compromises. Thus, the AIA is not the harmonization that we wanted; and IPRs are not the low cost alternative to litigation that was promised.

  8. Max, that’s not quite the issue. The term “ratchet” would be given its ordinary meaning to one of ordinary skill in the art by the PTAB which would be as broad as reasonable. It would not be given any special meaning that is different from that meaning.

    In court, the construction always considers the specification such that the construction of the term always is in view of specification and prosecution history.

    There’s that recent case were talking about today here on Patently O, where the term “critical files” was given its commonly understood meaning over a more special meaning “critical system and user files” given that term by the specification. That, trust me, is unheard of at the Supreme Court level do not consider the specification and prosecution history over some dictionary definition, and the case in question probably will be reversed or not followed by its brethren henceforth because it is absurd. What the Federal Circuit did in this case was essentially apply the patent office method of construing a term – broadest reasonable interpretation, which actually is more specific than the term is given in the specification in that case.

    1. Ned, your assertion that BRI can ignore the specification and file history [the intrinsic evidence] is simply not true, as shown by the Fed. Cir. decisions on what the word “reasonable” in BRI means. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) (patent claims in PTO re-examination are “given their broadest reasonable interpretation, consistent with the specification”); and In re Trans Texas Holdings, 498 F.3d 1290, 1298-99 (Fed. Cir. 2008). In Tempo Lighting Inc.,v. Tivoli LLC. the Fed. Cir. confirmed earlier Fed. Cir. decisions that the PTO BRI claim interpretation test in post-grant PTO proceedings includes prosecution history (aka “file wrapper” or “disclaimer” estoppels) as to the meaning of certain claim terminology) of the patent in its pre-allowance prosecution.
      I appreciate the dislike of IPRs by impacted patent litigators, and their unrealistic views that BRI is the problem, but could we please at least have an honest debate?

      1. Too bad Examiners don’t seem to know these rules. I consistently get BRIs that are shocking in their brazenness. During prosecution, the argument that the Examiner has exceeded the BRI typically falls on deaf ears — or at least I cannot remember winning a single argument about this, regardless of how true it is.

    2. I read through the ‘103 patent.

      link to google.com

      It wasn’t obvious to me that the phrase “critical files” was anywhere defined in the written specification.

      The phrase has a specific meaning in the Windows family of operating systems.

      For example, look at the last paragraph on pg. 261 from the below URL.

      link to books.google.com

      I have a problem in that the claims were not narrowed to apply solely to the Windows family of operating systems, but the examiner never brought up that point.

      The CAFC decision seems consistent with MPEP 2171.

      The second requirement is an objective one because it is not dependent on the views of the inventor or any particular individual, but is evaluated in the context of whether the claim is definite — i.e., whether the scope of the claim is clear to a hypothetical person possessing the ordinary level of skill in the pertinent art.

      The following is also relevant.

      2111.01 Plain Meaning [R-07.2015]
      [Editor Note: This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the “effective filing date” of the claimed invention instead of the “time of the invention,” which is only applicable to applications subject to pre-AIA 35 U.S.C. 102. See 35 U.S.C. 100 (note) and MPEP § 2150 et seq.]

      I.THE WORDS OF A CLAIM MUST BE GIVEN THEIR “PLAIN MEANING” UNLESS SUCH MEANING IS INCONSISTENT WITH THE SPECIFICATION

      Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. [my bold]

      II.IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION

      “Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”

      1. Joachim, don’t you think it’s odd that the Federal Circuit is applying “broadest reasonable interpretation” in reviewing the claim construction from district courts?

        1. Isn’t MPEP 2111.01 Plain Meaning [R-07.2015] relatively new? I don’t remember that it existed back in the early 90s. It almost seems like an effort to control examiner flights of fantasy in BRI (or at least to make a pretense at controlling examiner flights of fantasy in BRI).

          While it appears that the CAFC is willing to allow examiners and APJs to ignore limitations in the written specification but not in the claim itself, the CAFC is not willing to allow examiners and APJs to ignore the vocabulary and terminology of the art. Thus BRI like standard construction must be performed relative to PHOSITA’s epistemic language and not ordinary English.

          Unlike BRI the CAFC will in standard construction make sure that the PHOSITA’s most general epistemic usage is not overridden by the written description. Thus the CAFC will construct claims relative to limitations in the written description even if those limitations are not found in the claim itself.

          In CIOFFI v. GOOGLE, INC. the CAFC did not find any override of PHOSITA’s epistemic usage of the Windows meaning of “critical files” by the written specification’s reference to “critical system and user files”. Thus the CAFC did not construct or interpret “critical files” relative to the written description’s phrase “critical system and user files” because the written description failed to state that “critical files” means “critical system and user files”.

          The problem with the ‘103 patent lies not in 35 U.S.C. § 112 ¶ 2 but with 35 U.S.C. § 112 ¶ 1, for the terminology of “critical files” is meaningless in the context of Linux/Unix or of the MacOS. For these operating systems a PHOSITA might have to resort to the ordinary English dictionary definitions of “critical” and of “files” because “critical files” has neither special nor specific epistemic meaning in the context of these operating systems.

          Of course, Cioffi’s attorney might argue that even a PHOSITA of Linux/Unix or of the MacOS would be familiar with Windows epistemic vocabulary because of the pervasiveness of Windows and because the epistemic vocabulary of the MacOS, which is a variant of Unix, has brought “folder” into the Linux/Unix epistemic language, and he would probably be correct. I use Linux almost exclusively, but I would understand folder (a Windows or MacOS term) automatically as equivalent to the Linux/Unix term “directory”.

  9. Dennis, hopefully the decision by the Supreme Court to accept cert will still be pending when the Federal Circuit decides MCM v. HP so that someone flags the Supreme Court about the seriousness of the constitutional issue. They would be wise to defer addressing these petitions until they decide the constitutional issue, which does seem inevitable.

    Frankly, I don’t know how the Supreme Court could get the con law issue onto its docket out of order of the other issues.

    1. Another chuckle from me, as you appear to have learned a lesson that I have endeavored to teach you on the constitutional angle.

  10. The MCM / Cooper argument isn’t just that the claim is “unlawful,” it’s that per the designation as a public right, the claim is de facto administrative, and Congress can do whatever the H it wants with it. This is the law.

    This means BRI, or something completely different.

    From an admin law / Art III perspective, this petition seems doomed to fail, but perhaps the SCOTUS will see it through a different lens.

    1. David, I fully agree about the BRI issue primarily because there appears to be no there, there — no real case and controversy.

      The ultra vires question is more interesting.

      1. I don’t see how. Per the PR designation, the claim may be removed entirely from the Art III courts.

        Judicial reviewability – including a decision to institute – is purely discretionary (per Congress). Where statutory authority is exceeded, that is a question for the Court of Appeals, not the SCOTUS.

        1. David, of course the is not interesting if IPRs are unconstitutional.

          I was only talking about the “big” picture. An agency acting ultra vires is of general interest to the whole of the government. BRI is limited only to patents.

          Also, the issue of what the AIA means by “no appeal” for institutions decisions “under this section.”

          The right granted patent owners by 315(b) is a right not to have to undergo the IPR. That right is lost absent an immediate appeal/mandamus.

          1. As I pointed out, Congress did not – in fact – change the law as it pertains to what a patent is (property).

            This then is a F A T A L combination for the AIA.

            One that the courts cannot fix, as the “option” of interpretation cannot reach an effective End that Congress itself explicitly considered and rejected.

            Not this time for this law.

    2. From an admin law / Art III perspective, this petition seems doomed to fail, but perhaps the SCOTUS will see it through a different lens.

      Mayhap the lens that Ned has (repeatedly) brought to your attention…..

  11. Only the NYIPLA discusses the big issue in my view — the ultra vires nature of the IPR in this case and the Feds determination that ultra vires actions by the PTAB are beyond appeal, subject only to mandamus — but see the below case where an alternative mandamus request in the briefs was ignored. And, why does one have to wait to a final written decision, and lose it, in order request mandamus of an ultra vires institution of an IPR beyond the authority of the PTAB? In the case of 315(b), there is nothing left to decide after the institution decision. Everyone is wasting their time, money and energy by litigating to a final decision. This is literally “in$ane.”

    CLICK-TO-CALL TECHNOLOGIES, LP v. ORACLE CORPORATION
    link to cafc.uscourts.gov

    “Second, although CTC claims that it has petitioned
    for mandamus relief, there is no mandamus petition
    pending before us. There are three conditions that must
    be met before a writ of mandamus can issue: (1) the
    petitioner must “have no other adequate means to attain”
    the desired relief;” (2) the petitioner must demonstrate a
    “clear and indisputable” right to the writ; and (3) the
    court “must be satisfied that the writ is appropriate under
    the circumstances.” Cheney v. United States Dist. Court,
    542 U.S. 367, 380-81 (2004) (internal citations and quotation
    marks omitted). In its reply brief, CTC argues in the
    alternative that it “has a clear and indisputable right to
    issuance of a writ of mandamus because the Board ignored
    the plain language of § 315(b) by exercising jurisdiction
    over this case.” Appellant Reply Br. 11. We conclude that CTC’s cursory allegations in the alternative
    are insufficient to permit the court to meaningfully consider
    the issue at this time.

    For the foregoing reasons, we dismiss CTC’s appeal
    for lack of jurisdiction.

    1. Ned,

      As I have pointed out, the taking occurs at the initiation point – quite separate from any decision on the merits of case itself.

      By focusing on the fact that their are multiple (and different) sticks in the bundle of property rights, one can easily see that even Congress is constitutionally constrained as to its passing subsequent laws dealing with the property right that a granted patent has.

      I pointed this out directly to Malcolm on recent threads.

      The AIA did NOT change the basic first law about the patent being property.

      Takings provisions of the constitution thus still fully apply to what Congress attempted to “tack on” with the AIA.

      Believe it or not, my other naysayers out there, Congress can still “get into trouble” by attempting to pass laws that do not measure up to constitutional scrutiny.

      And further to my naysayers, THIS particular law was expressly passed to be NOT parse-able.

      The good ship USS AIA Titanic was purposefully built to NOT have bulkheads, relying instead on the Chaebol like “too big to f a i l.”

      NO amount of “judicial manipulation” can reach a result that Congress explicitly considered and rejected.

      Such is itself a constitutional violation.

  12. Do any of the briefs so far explain [or question] how Cuozzo would have won in its IPR if its IPR BRI claim interpretation was changed by the Sup. Ct. to a patent infringement suit standard? Is not that essential to having a requisite “case or controversy”?

    1. Paul – I have not double-checked this, but I don’t think that any of the amici go into the particular facts of Cuozzo and make the claim that the patentee’s loss was due to BRI.

    2. Paul, as I pointed out at Gene’s site, Cuozzo did not seem to complain that about any construction being too broad. He did complain about one construction being two narrow.

      The whole issue of BRI is being argued in a vacuum — a decision of the Supreme Court will change nothing in the case. How in the world is the Supreme Court going to accept cert here.

      This is going to be easy to deflect by the government on these grounds.

      1. Paul, In our own case, MCM v. HP, we had two prior litigations involving the patent where its validity was sustained. The IPR was a third bite at the apple, the second by HP. We did not complain about BRI, and like Cuozzo, argued for a broader construction in one instance as well.

        What we need is a case where the PTAB rejects a prior construction of a court and adopts a broader construction that results in invalidity. That will set the issue up squarely.

        1. When a party is arguing in an IPR for a broader that BRI [broadest reasonable interpretation] of claims, doesn’t that make it a BUI [broadest unreasonable claim interpretation?]
          Seriously, how can a valid patent infringement suit claim interpretation be broader, rather than narrower, than a valid BRI?

    3. As I pointed out Paul, a takings had occurred regardless of any final adjudication on the merits.

      The “case or controversy” is thus separable from the final merits decision, and cannot be dismissed (of course, if this point is not made TO the court, the decision reached BY the court may not reflect this actuality).

  13. The broad standard effectively negates the presumption of validity associated with each and every patent right.

    I’d love to see the “reasoning” behind this statement.

    How many “unreasonably broad” claim construction decisions have resulted in the tanking of otherwise “presumed valid” claims? Surely these geniuses have tallied them up and provided lots of detail about how the claims should have been construed if only the patent office Truly Loved Patents like these amici do.

    1. MM, I have been involved in any number of reexaminations where the claims were litigated in court. We have had number of claims rejected over ridiculously broad claim construction where the PTO ignored prior court constructions. This is not an academic exercise in most cases.

      Here it does seem to be an academic exercise.

      1. Both interpretation standards start from the customary meaning. Both accept that the applicant can be his own lexicographer. How can the BRI can introduce uncertainty? Some want to believe that the presumption of validity makes a lot of difference. Blook in Phillips, the presumption of validity is only mentioned in relation with indefiniteness. Assuming this is still good law after Nautilus, Phillips says that the presumption should play a very minor role in claim interpretation.

        1. Pika, its hard to explain out of context of real life examples. But trust me, there is a major difference at times because the PTO starts with dictionary definitions or the like and is NOT constrained one iota by the specification. This leads to wild and wholly constructions.

          See, In re Morris for more. Note who lost that case.
          link to scholar.google.com

          1. Even the courts cannot read limitations of the specification into the claims unless there is a clear disclaimer. I don’t think In re Morris totally nails your point. See below from Morris.

            The problem in this case is that the appellants failed to make their intended meaning explicitly clear. Even though the appellants implore us to interpret the claims in light of the specification, the specification fails to set forth the definition sought by the appellants. Nowhere in the technical description of the invention does the application use or define the phrase “integrally formed.” The phrase briefly appears in the “Summary of the Invention” and again in a description of the “advantages of the present invention.” In neither case is a drawing referenced or a precise definition given.

            1. But Pika, the court was looking for a definition or something akin to that in the specification in order to be driven off the dictionary definition. Nothing like that occurs in court where the specification predominates over dictionary definitions.

              1. Ned, that In re Morris decision was clearly decided on the basis of inadequate attorney argument. As SAPJ McKelvey famously noted, the Board, just like the Courts, is not required to engage in “truffle hunting” the record below for arguments the attorneys fail to make.
                Your assertion that lay juries in patent suits pay more attention to the specification than APJs in IPRs does not need a response.
                I do not doubt some examiners pay more attention to dictionaries than specifications, but few specifications give actual definitions of claim terms to adequately rebut that, and using claim terms inconsistent with normal usage in the art or ambiguous is risky.

                1. Paul, I agree and take all the blame for our loss in In re Morris. But the case still lays out the law on what BRI is.

                2. I skimmed. I think you fell afoul of standard English phrases like “integral components of single subunit”. You needed either a specific definition of “integrally formed” in the written specification or a qualification of “integrally formed” — maybe “integrally formed in a single piece” — in the claim.

                  I will look at the decision and the application in more detail over the weekend.

          2. Ned consider a claim to a stent delivery and release system which is a transluminal catheter system about 4 ft long, the claim including the word “ratchet”, which is the contribution to the art. Try looking that word up in the dictionary. It is quite specific. Try imagining ratchets you know. Toothed wheels and pawls. That sort of thing.

            But then mull over what “ratchet” might include when given a BRI standard. These days, we are always burbling on about this or that “ratchet effect”. Almost anything will function as a ratchet, like the heel of your boot when you are a member of a Tug of War team. The USPTO could point to almost anything and assert that it is capable of functioning as a “ratchet”.

            Seems to me that it is simple everyday mechanical terms, where the difference between BRI and the “real” meaning of a claim can be at its most extreme. The more esoteric or complex the technology, the smaller the difference becomes.

      2. I was involved in a matter – where a final markman order was affirmed by CAFC – and the patent owner in the subsequent reexam – filed the order with PTO – and specifically disclaimed any scope outside the markman order – and argued, therefore, the claims as defined in the markman order – is ‘the broadest reasonable interpretation’ and that PTO should at the very least give comity to the Art III efforts (actually codified in MPEP). Heads exploded. The PTO just ignored that – and gave ridiculously broad claim construction – totally at odds and openly hostile to the Art III court.

        1. …should I again make reference to the Federalist Papers and the (known) dangers of co-locating the different powers of the different branches of the government within one branch…?

          Separation of Powers is a very real concept (apparently, “not for everyone,” except, well, yes, the lesson IS for everyone)

          😉

        2. Quite possible, especially since reexaminations are not run by APJs [like IPRs]. Also since claim scope cannot be re-defined simply by filing claim scope disclaimers [or their would never be any need to actually amending claims] and since a Markman claim scope definition in patent litigation that is still pending is not binding authority even in another Article III court, much less for BRI claim scope. But, as you note, the reasoning/basis of the Markman decision should at least be considered by the PTO.
          If a reexamination BRI claim scope IS unreasonably broad that is appealable – first to the Board and then to the Fed. Cir.

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