Some thoughts on Broadest Reasonable Interpretation

By Jason Rantanen

A few weeks ago, my curiosity took me into trying to figure out what broadest reasonable interpretation (BRI) actually means as an approach to claim construction and how it differs from claim construction in infringement proceedings.  Surprisingly, there’s relatively little in treatises or academic work on this subject so I ended up putting together a short essay on the subject.  Here are links to the essay on SSRN and SocArXiv.

The abstract:

In this essay, I examine the meaning of “broadest reasonable interpretation” along two dimensions: how it affects the Federal Circuit’s review of Patent Office claim constructions and what it seems to mean in substantive terms. Central to both is the term “reasonable.” How should that term be understood? Does it mean that the Federal Circuit grants deference to the Patent Office when reviewing its constructions, as some commentators describe and some opinions suggest? And, perhaps more importantly, what is a “broadest reasonable interpretation” and how does that fit into the process of claim construction generally?

Here, I argue that regardless of one’s view on the historical nature of judicial review of Patent Office claim interpretation, any deference is inconsistent with the Federal Circuit’s use of a de novo standard when reviewing claim interpretations by the Patent Office (with the exception of findings of fact relating to extrinsic evidence). Second, I argue that the still-developing jurisprudence at the Federal Circuit is coalescing around a meaning of “broadest reasonable interpretation” that allows for the existence of multiple ordinary meanings and reads the intrinsic evidence with a certain degree of “looseness,” but which is still hesitant to embrace ambiguity within the application of the tools of claim construction.

102 thoughts on “Some thoughts on Broadest Reasonable Interpretation

  1. Paul Cole pleads at #9 for a claim to be given a single correct interpretation, that applies whatever the context. I sympathise but also sympathise with the PTO’s predicament and need to assert an uncompromising BRI standard.

    Take for example the word “flexible” and imagine it in a claim to a stylus. Les and I exchange views on “flexible”, in the indefiniteness thread, starting at #5.1.1. Does “flexible” cover a ceramic stylus or a diamond stylus? One would likely get upset with the PTO Examiner that asserts that diamond is “flexible”. So too would a competitor using a diamond stylus and told it is an infringement.

    Yet the Examiner is only “doing their job”. You impose a stress on diamond and it suffers strain. It has a Youngs Modulus, just like any metal and every other crystalline material. It’s just that the gradient of its curve is different. So it is eminently “reasonable” to assert that it is “flexible”. At least until Applicant inputs a top limit on the Youngs Modulus.

    In reality, who decides, when the boundary between “reasonable” and “not reasonable” is over-stepped? The court of appeal, I suppose.

    1. So it is eminently “reasonable” to assert that it is “flexible”.

      Clearly not.

      And clearly you missed why.

      Hint: Person Having Ordinary Skill In The Art.

      The Art of quill making is not so concerned with such ever so slight Youngs Modulus and it would be clearly UNreasonable to assume otherwise.

      1. Who said anything about quills? I’m not going back to the Middle Ages. I had in mind a stylus that runs in a groove on a gramophone record.

        I just want claims that are clear. I want to know with reasonable certainty what is within their scope and what is without and I look to the PTO to sort that out before issuing the claims.

          1. (This is addressed to your “flexibility” position and not your “want the Office to sort that out” position – the latter position is very reasonable)

    2. @ Max

      You have taken me back 40 years in technology, at least.

      However, a flexible stylus could have a number of possible meanings.

      One would be that the same stylus could be used with a variety of disc formats e.g. 78 rpm, 45 rpm and 33 rpm.

      The other is, as you say, that the stylus is itself mechanically flexible. But do you mean that the support arm is flexible or the head is flexible?

      In either case what is meant by flexible? Absent some definition in the specification, both meanings are possible.

      An examiner should read the specification and the claims and decide, in the context of the teaching of the document as a whole, what meaning would be given to the term by a skilled reader. Where there is real difficulty in interpretation that is something we have to live with. His or her job is to step into the shoes of the average skilled reader and so far as possible to focus on the CORRECT INTERPRETATION , not to create fanciful falsehood acceptable only within the walls of the USPTO but not to the public outside.

      In the context of a ceramic or diamond stylus, the skilled reader would think of Young’s Modulus only in cloud cuckoo land, not in the real world. Nobody goes bending the tips of record player stylus as an attractive hobby. This is exactly the sort of exercise that creates unnecessary and avoidable difficulty for applicants and should not be indulged.

    3. The problem with BRI is well illustrated in a comment on the Bigio case to which I have referred.

      “The question at issue in Biggio (sic) was not whether toothbrushes are hairbrushes. The questions (sic) at stake were (1) “is ‘hairbrush’ broad enough to read on brushes for eyebrows or mustaches?””

      The answer has to be derived looking at the disclosure of the document as a whole, including the drawings. The brushes in question were for hair growing on the scalp, and in particular styling brushes for the hair of human females. That is consistent with the ordinary and common usage of the word “hairbrush”. Application of the term to brushes for eyebrows or moustaches amounts to a distortion and should be disregarded. Ordinary common sense and the common usage of mankind is the standard here.

      1. The answer has to be derived looking at the disclosure of the document as a whole, including the drawings.

        This is a throw-away answer. Yes, of course, one must look at the whole disclosure in construing the claims.

        So, now I have looked at the drawings and seen a bunch of exemplary hairbrushes. Is the claim term “hairbrush” limited to those exemplary embodiments? I think that Bigio got it exactly correct when it said “no.” To answer “yes” would be reading limitations from the disclosure into the claim. If the applicant does not want to claim eyeliner brushes, the very drawings that you reference provide adequate support to narrow the claims by specifying the orientation of the bristles relative to the base to exclude eyeliner brushes.

        I can see the attraction of the “common sense” approach to claim construction that you are advocating, but it seems to me that the problems of this approach are worse than its advantages. If the word “hairbrush” can be limited to those shown in the drawings, then so can any other claim term. This is exactly the sort of reading-the-spec-into-the-claims that your average defendant tries to do during claim construction, and while it might be convenient to the applicant during prosecution, that sort of construction rule is a real pain to the patentee during enforcement. This is not “deviancy,” but rather it is just the necessary price to be paid for the ability to come out the other side with claims that can be enforced for some useful purpose.

        Better to let the claims read broadly during both prosecution and enforcement. If that breadth is too broad during prosecution, one can (as they always say) amend as necessary.

        1. So instead of “hairbrush” how about an improved (“A”) “baseball”?

          In the English game of cricket, the specification for the ball is laid down (in the Rules of Play) with mind-numbing detail and precision. So too, I guess, in baseball.

          Yet children can play “cricket” or “baseball” with just about any ball (“B”) of reasonable size. So much so, that a “Ball for playing baseball” covers just about anything.

          So does one construe A as B? What is “reasonable, here?

          1. I acknowledge that it can be important to establish the outer limits of what is “reasonable” in claim construction, but I am less interested in this precise question at present. I would say that if the claim recites “baseball” with nothing more, then the Examiner should feel free to reject it based on cricket art.

            For one thing, if the only difference between an alleged infringer and the claimed method is the choice of ball, doctrine of equivalents would surely hook a cricket ball, so this issue should be aired during prosecution.

            Secondly, (as in Bigio) cricket balls are surely analogous art to baseballs. It would require slicing the bologna rather thin (as Justice Kagan would say) to argue that baseball design and cricket ball design are totally different art fields.

            1. Greg, I’m not alluding to what is “analogous”. You can play baseball or cricket with a tennis ball (if that’s all you have available in your camp or on the beach). So a tennis ball is a ball for playing cricket or baseball. But if you claim a baseball, pace Bigio, can the novelty of such a claim ever be prejudiced by a tennis ball?

                1. I don’t know. I’ve never tried to play lawn tennis (or real tennis, or table tennis) or cricket or baseball with a raquetball (whether blue or black). I doubt it’s even possible.

                  All I’m trying to do is to explore what BRI means, in practice. Suppose you claim a surgical stapler and the PTO objects that a particular prior art office stapler destroys the patentable novelty of your offered claim. Could that ever be so?

                2. How bizarre: “I doubt it’s even possible.” from the guy that said this: “You can play baseball or cricket with a tennis ball (if that’s all you have available in your camp or on the beach).

                  Do you feel compelled to contradict yourself any time you see a post by anon?

                  Suppose you claim a surgical stapler and the PTO objects that a particular prior art office stapler destroys the patentable novelty of your offered claim. Could that ever be so?

                  Wasn’t it MacGuyver show number 78 that he did exactly that…?

                  (But see also post at 3:17 pm in the 9.1.2.1.1.1.2 series.

      2. I, for one, do not see any BRI problem with the decision in the Bigio case. The late American comic, George Carlin had a brief gag wherein he said words to the effect that for good hygiene he brushed his hair, his teeth, and his bum outlet every day; and for efficiency and economy, he used the same brush.

        1. I wold wager that such was NOT a Person Having Ordinary Skill In The Art.

          (You just supplied a point supporting the opposite of your position – 😉 )

    4. Max –

      You’ve moved the goal post a bit. And 5.1.1 is missing for some reason. Our conversation was about stents stainless of which there are at least some that are flexible within the ordinary meaning.

      Here, flexible might need some qualifiers, such as “relative to” the prior art…. just to help a jury out… One of ordinary skill in the art would understand that “relative to” the prior art is implied.

  2. There are unintended consequences if you rein in BRI of the PTO. 1) If you notice the allot of specifications have the term “maybe” through out the specification, hundreds of times. A term or part “maybe” used does not exclude other possible meanings or parts. Well that might have to go away since…..2) If a term or part is undefined and have more than one meaning ordinary skill in the art would take. Unless the specification states “this term (part, etc) IS…..” a 35 USC §112(b) rejection might be made since the term is indefinite. The indefiniteness rejections will increase…..3) Piecemeal rejections will go up since the claims are not understood until the applicant clears up the meaning or amend the claim, then art can be applied. First rejection would be §112’s and if claims are amended art will be applied at the FINAL rejection. ….4) I would not be surprise claims are written more in 35 USC §112 (f) form.

    If you want the only meaning to be from the specification right now, then write your claim in 35 USC §112 (f) form and write the specification accordingly.

        1. Your reply of “cake and it it too” does not make any sense.

          If breadth WAS indefiniteness, and I wanted breadth, but not indefiniteness, THEN your statement might make sense.

          As it is, no, your statement does not make sense.

          1. BRI is used and is the same in examining a set of claims under §101, 102, 103, 112. One wants to claim their invention with much breadth as possible without being indefinite, yet for limit that same breadth in applying art. If one claims their invention very broadly, they are shock, shock I say, that USPTO examines those claims just as broadly.

            1. Except not. I already expected examination to be according to the breadth of the claim (this does NOT mean that BUI is proper, or that some or any “cake” is involved).

  3. The wonderful world of words …

    link to cnbc.com

    “…autosteer is an assist feature that requires the driver to keep his hands on the steering wheel at all times, to always maintain control …”

  4. In CSB-System International, Inc. 15-1832 yesterday the Federal Circuit again has held that the difference between the BRI claim interpretation applied by the PTAB and the Phillips claim interpretation [which should be applied to claims of expired patents, which can no longer be amended] made no difference to their actual decision sustaining the reexamination end result in this case. [There is only one Fed. Cir. decision which alleges, in dicta, that not using BRI could have changed the result.]
    [Cuozzo itself is another example of a post-grant proceeding in which it could not have possibly made a difference to the outcome – there was not even so much as a presented argument in Cuozzo that a Phillips claim interpretation would have better distinguished over the cited art than the BRI claim interpretation.]
    If anyone can point to actual IPR decisions in which the patent owner lost claims under BRI but would have retained those claims under Philips it could be useful for this paper.
    [This should not be confused with overbroad ordinary-examiner BRI application claim interpretations that are not appealed from.]

  5. I definitely agree with Prof R that there is surprisingly little literature on this point. It seems to me (and I would be delighted to be proven wrong about this as the jurisprudence develops post-Cuozzo) that Philips gives you a construction of the claim, while BRI actually gives you (for any single claim), an overlapping set of constructions. That is to say, BRI is not the broadest reasonable construction, but rather a set of broadest reasonable constructions.

    My experience in the Art Unit 1600s is that the approach to BRI is “if I can construe this claim to read on X, then it reads on X for purposes of prosecution, and if I can also construe it to read on Y, then it simultaneously reads on Y, even though no single construction can possibly read on both X and Y simultaneously.” In other words, the BRI standard means that the Examiner does not have to pick just one construction, in the way that a D. Ct. does.

    I (and my clients) frequently find this frustrating, but if I look at the situation dispassionately, this might actually be the correct way to do prosecution. The goal of examination is to grant a claim that does not read on the art. By forcing me to amend to preclude any possible construction that could read on the art, the public and the affected industries are getting a better set of claims in issued patents.

    1. That is only true if/when the claims terms are being construed consistently with the specification. If the construction is not plausible in view of the specification, the patentee is giving up claim scope to carve around potentially irrelevant art.

      1. Sure, agreed. If one has (for example) defined a term in the spec and the Examiner is giving a rejection based on “well, the term could mean ____ if we ignore that definition,” then one definitely should not just give in and amend. That is just laziness in claim construction, not rigorous defense of the public domain.

  6. Jason, I wonder if some of the strong objections to PTO BRI claim scope may be intertwined to some extent with the KSR-induced citations of more prior art from non-analogous-art sources? Especially where the claim itself limits the claimed invention to an improvement in a particular art? [Even though KSR equally applies to patent claims in litigation.] Just a thought.

    1. Could this be related to a lack of discipline in stepping through all of the Graham factors in the Office (tendency of cut and paste form paragraphs) as opposed to courts doing the necessary legwork?

      1. “Lack of discipline” seems to me the understatement of the year. To be fair to Examiners, however, I am not sure that they are at all equipped to assess obviousness. So much of what goes into a proper obviousness determination (commercial success, unexpected results, determination of the identity of the “ordinary artisan” for the given invention) relies on data that are not even in existence at the time that the Examiner is asked to consider the question. It is really rather unfair to ask Examiners to adjudicate this sort of a question.

        I frequently think that the Australians have the right idea on this score: a patent can be invalid for obviousness, but the Examiners do not examine for obviousness. Once the Examiner finds novelty, utility, and adequate support, they send it to grant and you can leave it to opposition (or IPRs in the U.S. context) to sort out the obviousness question.

        1. That is what is called a half-@$$ed idea.

          Full examination or none at all (registration system).

          Anything in between is worthless for the value of what you pay.

              1. Yes, I want to pay for a process that makes the patent better, even if not ironclad.

                In Australia, they are making sure that the claims that go to grant are directed to statutory subject matter, useful, novel over all known art, adequately described and supported in the spec, and phrased so as not to confuse the relevant audience. Any one of these would be useful even if one did not do another.

                Why the perfect to be the enemy of the good?

                1. Yes, I want to pay for a process that makes the patent better, even if not ironclad.

                  You are already paying for that.

                  It’s called examination and the focus should be on that examination being done correctly.

                  All you are doing with your half-baked idea is postponing the second half of the examination to a point of higher risk.

                  No thanks.

              2. Two additional points.

                (1) I think I am getting myself confused about Australia. It appears that their examiners do assess inventive step. It must be some other jurisdiction that I have in mind. In any event, this is all largely irrelevant to my broader point.

                (2) I hope that I am not mistaken for making a strong argument in favor of excluding obviousness from the list of things that the PTO reviews. There are plenty of good arguments for why the PTO should examine obviousness. I am merely airing an idea I have sometimes had about whether it is really fair to ask the PTO to assess obviousness, given that they really do not have the wherewithal to do the job right in any but the most straightforward of cases.

                1. Greg, in 1978 the UK had to give up its patent system, in order to harmonise with the EPC. Up to 1978, the UK used to examine for novelty but not for obviousness. It was thought that under a standard civil dispute “more likely than not” evidence standard, obviousness could only be assessed soundly in inter partes proceedings.

                  Everybody knew this, and allowed for this in patent disputes. There weren’t many of them, back then.

        2. is really rather unfair to ask Examiners to adjudicate this sort of a question.

          It’s their job – they are paid to do exactly that.

          1. This is a perfectly fair response to the way that I phrased my post. I should have been more clear.

            I do not mean to convey that we should pity the Examiners who have the unpleasant job of assessing obviousness. I mean that it is unfair to the applicant to require that they convince an Examiner of nonobviousness when much of the most relevant evidence for or against obviousness does not (indeed cannot) exist at the time that the Examiner is examining.

            I am thinking mostly of pharma inventions, which are most of what I do. If my client invents a new drug, they cannot just go to market with it. They need to get FDA approval first. FDA approval is expensive, so they are not even going to begin the complicated parts of the approval process until they know that they will have market exclusivity. In other words, it is not enough to file. Before you pull the trigger on starting Phase III, you need to see a notice of allowance.

            This means that at the time that you are trying to get the patent you have: (1) no data about how this drug works in actual human patients; (2) no sales data; and (3) comparatively little commentary by industry peers, because there are no human trials yet to wow the industry. These are all highly relevant data for evaluating obviousness, and they not only do not exist, but they will not exist until after the patent is granted, because only then will the human trials commence. The whole business of evaluating obviousness, then, is being conducted without much of the most relevant evidence.

            This creates a deleterious Catch-22. There are good drugs that will never be brought to the market because they do not have patent protection, but if they were brought to market, their patentable nonobviousness would be established beyond all doubt. The system creates deadweight loss, which could be avoided if we simply said “you do not need to establish nonobviousness in order for the patent to grant. We can consider that issue later, once all of the evidence is in.”

            1. Ah yes, the good old “Pharma silo – treat us special” viewpoint.

              Your argument proves too much – and not in the way that you are going to like.

              Instead of wanting special treatment and not the full examination to be done, your argument just points out that your patents should be rejected under 112 for not possessing the utility at the time of filing. I have seen far too many drugs FAIL the FDA process to “spot” you utility that you do not know if you have or not at the time of filing.

              In essence then, you just want to exchange one form of special treatment for a different form of special treatment.

              “Divide and conquer” of patent law by such “Art” specific special rules is a p00r way to have a patent system.

              Instead of the different special treatment of not being examined for obviousness, let’s clamp down and demand that you actually meet the possession requirements at the time of filing.

              You need to run through some extra steps to show actual possession? So be it / the entire market has to do those same steps.

              1. I do not know where you are getting the idea that I want special treatment for pharma. I agree that all inventions must meet exactly the same standards for patentability. I am floating the idea of doing away with examination for obviousness—not just for “pharma” applications only (how would one decided which applications are “pharma” and which are not?)—but for all applications.

                1. I got the idea because your supporting statement applies only to a Pharma model.

                  Once again, read my post – in its entirety.

                  Your views reflect some serious silo thinking here.

                2. [Y]our supporting statement applies only to a Pharma model.

                  Nonsense. I agree that the current model is keeping more pharma inventions than cellphones out of the market. Still and all, much of what I said applies to cell phones with equal force. You often do not have sales data during prosecution—not just in pharma but in lots of art fields. You often do not have much by way of industry reviews during prosecution.

                  Think, for example, of how greatly Apple’s MacIntosh changed how we all interact with computers. I dare say, however, that by the time the PTO were reviewing the various patent applications related to the Mac, that there just had not been enough time for this transformation to occur. So the Applicant was stuck with an examination of obviousness that missed the most important evidence for purposes of assessing obviousness.

                  I gave a pharma example because pharma is what I know, not because the point I was making is only true of pharma.

                3. Read again my reply – combine the two areas of “special treatment” and try to tell me again that Pharma is just like cell phones.

                  (Where are you digging up “sales data” now in your defense of Pharma…?)

                4. Greg, what we should be examining for is functional improvement — something that should be provable with evidence.

                5. Careful Ned – “improvement” can be a “tricky” word (consider that most disruptive innovation is at first a step backwards).

                  Remember as well that the goal of the patent system is NOT a network of streets, but rather a parking lot.

              2. [Y]our argument just points out that your patents should be rejected under 112 for not possessing the utility at the time of filing. I have seen far too many drugs FAIL the FDA process to “spot” you utility that you do not know if you have or not at the time of filing… You need to run through some extra steps to show actual possession? So be it / the entire market has to do those same steps.

                “Utility” is not the same thing as “FDA approval.” A drug can have a utility (inhibits sodium channels in dogs) even if it is not safe to administer to humans as a painkiller.

                I agree, however, that there are plenty of pharma apps out there that deserve 101 utility rejections or 112 written description rejections because the company files too soon, before it has done the necessary tests to establish utility and/or possession at the time of filing.

            2. mean that it is unfair to the applicant to require that they convince an Examiner of nonobviousness

              It is a good thing then that no such proof is needed as part of the examination (the onus is on the examiner – but you knew that, right?)

        3. “the Australians have the right idea on this score: a patent can be invalid for obviousness, but the Examiners do not examine for obviousness. ”

          This is not at all correct. AU examines utility apps for obviousness as well as novelty. They’ve gone through some contortions, for example having some quaint notions of what can be counted as “relevant” prior art in the past, but for at least the last 4 years or so are pretty close to EP or US standards now.

          You may have been thinking about the so-called “petty” patent of the 1990s, and its subsequent iteration, which required only novelty plus some “innovative step” (which was less stringent in practice than an actual inventive step or non-obviousness determination).

          Note you may have been thinking of the NZ system, which to my recollection has long been a novelty-grant system.

  7. As is well known, some years ago in his opinion In re Bigio Judge Rader confused a hairbrush with a toothbrush. I have a slide which I have shown at a number of conferences in the US showing Rene Magritte’s well-known painting The Treachery of Images (This is not a pipe) and showing the hairbrush in question with the legend “This is not a toothbrush either.” Similarly in the decision In re Klein, my slide shows the cited desk drawer with the legend “This is not a mixing jug.”

    The problem is that BRI leads to a phenomenon referred to by Janet Vaughn as “the normalization of deviance” by which successive internal decisions within an organization can lead from reasonable and proper behaviour and attitudes to those which are entirely inappropriate. Patent examiners constitute an inward-looking and self-referential population, and are at inevitable risk of succumbing to this phenomenon.

    What is needed, both in the USPTO and the courts, surely, is CORRECT INTERPRETATION, not some institutional unrealistic distortion.

    1. That “inward-looking and self-referential” aspect is especially insidious when government employees become tasked with a “Reject-Reject-Reject” mentality or a “patents must be bad” or a “those wanting patents must be G-g-g-grifters” mentality.

      1. Fortunately for you, not all, or even most, examiners fall into your description. Most are closer to the “allow what is allowable, reject what is rejectable, do your best with the inbetween, and call it a day” school of thought.

        The world is not always out to get you.

        1. Thanks temprand.

          No doubt that there are examiners as you say.

          What the actual “mix” is though is certainly up for discussion, and certainly varies from art unit to art unit.

          I would not go to your end of “most,” though, given both personal experience, discussions with other professionals, and widespread anecdotal tales.

          Add the fact that “SAWS is but one of many [uncounted and unaccountable] such programs” as admitted to by the Office itself, and trust my view more than yours.

          1. Okay, I’ll agree that the specific proportional mixture may be unclear. I am admittedly embarrassed on occasion by things I hear other examiners do. There are still a few examiners with the proud badge of “I only allow if the PTAB and Director force me to,” and a few that couldn’t logic their way out of an unlocked room, but most seem to be at least your average working man trying to do a good job (and seeing it as only a job, not some life quest to deny patents).

            1. All very well, but can anyone explain why anyone would seriously think that a toothbrush is analogous art to a hairbrush, and try to persuade the Federal Circuit that this is the case? Or cite a large wooden office drawer against a small mixing jug (of plastics material, though this did not get into the claim)?

              Normalization of deviance has been described as follows: To people outside of the organization, the activities seem deviant; however, people within the organization do not recognize the deviance because it is seen as a normal occurrence. Unfortunately, as regards field of endeavour and broadest reasonable interpretation the USPTO leaves much to be desired, not to mention evaluation of obviousness.

              1. Two points:

                (1) I will be interested to see if anon jumps down Mr. Cole’s throat on U.S. “sovereignty” grounds after this post. If not, nearly everything that he says to MaxDrei is going to ring rather hollow.

                (2) I certainly agree with you, Mr. Cole, that the doctrine of non-analogous art has been allowed to atrophy to a remarkable and unfortunate degree in U.S. law. That said, I am a bit surprised that you choose toothbrush/hairbrush as your reductio ad absurdum evidence for this argument. I guess from where I am standing (and maybe this just represents how much of the CAFC kool-aid I have been forced to imbibe by this point) the hairbrush art and the toothbrush art do not look so terribly non-analogous to me.

                1. Why would I jump down Mr. Cole’s throat? He is not peddling some “here, my EPO glasses work for me, why don’t you wear them”… type of CRP

                2. Mr. Cole thinks that our standard for evaluating analogous art is inferior to the EPO standard (I happen to agree with him here), and is urging us to change ours to come more into alignment with theirs. This is exactly what MaxDrei always does that drives you up a wall. The only difference is that Mr. Cole is proposing a change that would make it easier for applicants to reach grant, while Mr. Drei is proposing a change that would make it harder for (some) applicants to reach grant.

                  The fact that you are hostile to one of these suggestions and equanimous to the other suggests that “sovereignty” is not really the motivating concern behind your responses.

                3. Fair enough. If Mr. Cole shows up to say that he is not urging us to be more like the EPO in our assessment of what is and is not analogous art, then I will withdraw the remark.

                  I cannot see how one can read his above remarks in any other way, but I admit that he does not actually use the words “Europe has the better standard.”

                4. Your remark is off-base even if he does not show up. You assume the point that you want to criticize me about. There is a huge difference between open criticism and the more (typically asinine) MaxDrei “do as I am familiar with.”

                  Your comment is both a disservice to Mr. Cole and way too generous for MaxDrei.

              2. Paul Cole can anyone explain why anyone would seriously think that a toothbrush is analogous art to a hairbrush

                Because they’re both personal hygiene items with handles and, typically (but not always!) a network of brushes on one side of one end of the handle, allowing the user to apply force through the handle to the network of brushes so that unwanted matter can be cleaned off the brushed body parts.

                1. Brushing hair and brushing teeth is not quite as far apart as you might suppose. In German “Who’s got the most impressive moustache” competitions, I can well imagine competitors finding a toothbrush useful. Then one can contemplate the saying here in Germany, to “have hair on the teeth”. Analogous in Germany but not in the UK? How about the USA though?

                  link to de.wiktionary.org

                2. I had the following wholly fictional scenario in mind for the Judge Rader household:

                  Mrs Rader (she exists, I believe) downstairs: “Could you bring me down my hairbrush, darling?”

                  Randall Rader descends: “Here you are!” Hands over a toothbrush.

                  Marital discord ensues and questions as to sanity are raised.

                3. But that is just a cheap shot. The question at issue in Biggio was not whether toothbrushes are hairbrushes. The questions at stake were (1) “is ‘hairbrush’ broad enough to read on brushes for eyebrows or mustaches?” and (2) once one decides that the answer to (1) is yes, “are toothbrush references analogous art to eyebrow brushes?”

                  In other words, there is nothing about Biggio that suggests that Judge Rader did not understand the difference between a toothbrush and a hairbrush. That was not a question at stake in Biggio.

                  The correct scenario to play out in the Rader household is:

                  “Randall, dear, can you bring me down a brush for my eyebrows?”

                  – Randall brings down toothbrush.

                  – Mrs. Rader looks at it slantwise and says “hm, strange, but I guess it will do.”

  8. Perhaps the best test of what BRI is is by looking at the few cases in which a PTO BRI claim scope decision was held UNreasonable by the Fed. Cir. As I recall one is In re Vaidyanathan (Fed. Cir. 2010) (Newman, J.) and another in April 2010 was In re Suitco Surface? I assume this article discusses them?

    1. P.S. The Fed. Cir. has also remanded [2 or more?) IPR decisions for too broad (overly-prior-art-inclusive) BRI claim interpretations in IPRs. E.g., MICROSOFT CORPORATION v. PROXYCONN, INC. (Fed. Cir. 2015). In fact this may well be the most successful way of the many so far unsuccessful ways to challenge an IPR decision?

    2. Paul, since Morris, claims terms that have definitions or consistent usage so that the applicant has effectively become his own lexicographer, are given the meaning of the specification. Otherwise not in the PTO.

  9. In addition to investigating the contemporary meaning of the term “broadest reasonable interpretation”, it would be interesting to have more details about the history of its usage and why it’s suddenly “in the news” (so to speak). Maybe that’s in the essay, too (I haven’t read it yet).

    Here’s one explanation: the breadth of claims being sought in the logic arts is absurd (among other problems) and practitioners in those arts rely heavily on scrivening (and why not? they’re typically “innovating” vapor in the form of coined terminology). The goal of the game is to make it as easy possible for everyone to pretend that the logic being claimed “on a computer” has no “real world” counterpart, thereby making it easy to eliminate the best prior art and arguments about the junkiness of the alleged “new” logic. To that end, when art is cited that can’t be readily narrowed without giving up “all the value of the claim” (or going outside the scope of the specification, which was drafted broadly because the applicant didn’t want anything narrower and therefore didn’t pay to have support for narrower embodiments put in) practitioners must push back by asserting that the Examiner’s claim construction is “unreasonable.” This typically involves some assertion along the lines that the claimed invention is “completely different” from the asserted prior art and the “evidence” for that is that some facially broad claim term is responsible for the awesome “improvement” over the prior art, and how could the Examiner not see that? After all, the spec says that the invention improves over the prior art so the improvement must be coming from somewhere …. logically. At that point, the Examiner can give up (thereby imbuing the facially broad claim term with its newly discovered functional power, which may or may not be actually limiting) or try to force the applicant to amend its claim to recite the newly discovered functional terminology (and possibly lose that battle).

    This process, by the way, is indistinguishable from what happens in many district court proceedings, except the Examiner is replaced by judge who evaluates arguments made by an interested party.

    1. Absurd…
      Vapor…
      Pretend…
      Pretending that unreasonableness is not actually there…

      Personal sniping maxed to the whole “cohorts of G-g-g-grifters.”

      Same old script – this is not a contribution to the discussion. This is your standard fare for any post.

    2. at that point, the Examiner can just give up

      Why? Because he is “worn down”…?

      We both know that is a fallacy, Malcolm.

      Given the impetus to reject rather than grant, and given that there is no “reward” for “just giving up,” why would such happen?

      And this does not even get to the point that I have steadfastly advocated: the examiners MUST do their job and that means NO rubber stamping of ANY kind; no rubber stamping Reject Reject Reject and no rubber stamping Accept Accept Accept.

      But that too seems inconvenient for your typical bashing memes. You would rather simply play the “blame the applicant” game.

      1. What “impetus” to reject? Allowances are worth more “counts.” And the quality review rate is so low that even if every case reviewed is an error, you can still get a passable error rate. There is no real push either to allow or to reject at the office generally. Some small subgroups/art units maybe, but certainly not as a whole.

        1. SAWS-like and second set of eyes, along with a gen eral total count (RCE gravy train less but not gone).

          I don’t think your math is complete on the “get more counts for allowing.”

          (see also my comments about NO rubber stamping – in either direction – is acceptable)

          1. Okay, you are right again, with a side of cynicism. You get more counts if you don’t include RCEs. I only get to RCE if Applicant won’t amend or can’t argue around my references. I try to offer Examiner’s Amendments whenever possible, and have a better than 50% rate on those. I’d much rather do an Examiner’s Amendment and move the case so I can start a new one instead of looking at the same cases over and over on RCE.

            1. temprand.

              No doubt that there are examiners as you say that you are.

              But it is beyond clear (hence why Kappos changed the RCE point configuration) that most examiners were of the opposite mind: easy points on items already previously looked at.

              And thanks for acknowledging my being correct, but no need for the side of cynicism – that should go to recognizing basic human nature and examiners taking the easy path to hit what they are measured by, even as those measurements do NOT reflect a better, higher quality, non-widget based examination of any one application on the merits of that application.

    3. As an examiner, my favorite argument from attorneys is that “Prior Art X is not the same as our invention.” Almost universally my response is “Great! I see that. Now put it in the claims and I’ll consider it.”

    4. MM, in the era of coined terms, the examiner is entitled, I think, to read the terms as broadly as the language reasonably permits. Applicants generally have a hissy fit, trying to read into the claim a lot of structure/function from the specification as if the claim were somehow both broad in scope for the purposes of infringement by governed by 112(f) for the purposes of validity.

      I have seen a lot of this.

  10. I’ll venture a guess:

    BRI = Any definition that allows a claim limitation to be rejected by disclosure found in a go-to stack of prior art on the examiner’s desk.

    Synonym(s): BURI – Broadest Unreasonable Interpretation. Construing of claim terms without consulting the specification or drawings of the application leading to outlandish and sometimes comical results.

  11. Still working my way though, but I have a question about this paragraph:
    —–
    In contrast with district court proceedings, where claim terms are given their ordinary and customary meaning to a person of ordinary skill in art who reads the term in the context of the entire patent, “[t]he Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims
    their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” “Broadest reasonable interpretation” thus implies that the scope of the claim is potentially broader than a district court might arrive at.
    —-
    Both consider the meaning from the perspective of the person of ordinary skill. One reads the term “in the *context* of the *entire patent*” while the other reads “*in light of* the *specification*”. Is there a difference here I’m missing? Your use of “not solely on the basis of the claim language is not “in contrast” with the district court standard as you’ve stated it, because the district court reads the terms in the context of the entire patent.

    So the difference really is “the ordinary and customary meaning” versus “the broadest reasonably construction,” right? Perhaps I’m missing something that will come to light later, but this tripped me up.

    1. My reading of this is that in litigation, if there is more than one meaning of a term and meaning A is more consistent with the patent than meaning B, then meaning A wins out regardless of extrinsic evidence that supports the usage of meaning B in contexts outside of the patent in question.

      However, in prosecution, if meaning A is more consistent with the specification, meaning B is consistent with the specification but less so, but meaning B is the more accepted one in light of industry terminology and prior art, then meaning B should be adopted unless it is inconsistent with the spec (not merely less consistent than meaning A).

      In essence, BRI puts more weight into the customary usage of a term, whereas Phillips construction puts more weight into how the term is used in the context of the patent.

      I could be off the mark here though.

      1. Yes, except that as I understand the concept, as long as meaning B is an accepted meaning in the industry and is at least consistent with the specification, it is a permissible reasonable meaning. In this situation, both A and B could be a reasonable meaning. The broadest reasonable interpretation would mean that prior art that anticipates A would anticipate the claim and prior art that anticipates claim B would anticipate the claim. I’ll try to clarify this in the essay.

        1. Jason if you’re looking for articles on the BRI there is a good one in the PTOS from like 4-10 years ago iirc. If you want it and if you have trouble finding it let me know.

        2. Jason, the familiar concept is that the specification can override the ordinary and customary meaning to a POSITA if the applicant has become his own lexicographer.

    2. RE: “Broadest reasonable interpretation” thus implies that the scope of the claim is potentially broader than a district court might arrive at.

      I agree. My understanding is the difference in potential claim interpretation (1) in cases before the PTO or on appeal, and (2) in infringement litigation in court is that when a patent application is still pending the claims can subsequently amended or rewritten if one doesn’t like the interpretation an Examiner, appeal board or appelate court gives it, but granted patent claims, while not quite fixed in stone, can’t be so readily changed (broadening reissues within the first two years being an exception). In applications, an Examiner will give the pending claims as expansive an interpretation as can be (reasonably) supported by the specification, so as to apply as much available prior art as can be found in order – through negotiation of the claim terms – to firmly establish the patentable boundaries of the claims’ scope. In contrast, it seems that in litigation a court may try (if possible, given the limits of the definiteness requirement) to construe the granted claims in such as way as to preserve the validity of the patent.

      That said, I’m not aware of any cases where this theoretical difference actually made any real difference in practice.

      1. Further to my comments (4.2):

        The earliest case I can find on “broadest reasonable interpretation” dates to a DC Circuit case from 1924, In re Carr, 296 F 1017, which was cited with approval by the CCPA in an patent interference case from 1932, In re Horton, 54 F2d 961.

        “After a patent has issued, and it no longer is possible for the patentee to control the phraseology of his claims, the courts will so interpret them, if possible, as to protect him; but there is no reason, as we many times have observed, why an applicant in the Patent Office should not draw his claims to cover his actual invention only. For this reason, we have uniformly ruled that claims will be given the broadest interpretation of which they reasonably are susceptible. This rule is a reasonable one and tends not only to protect the real invention but to prevent needless litigation after the patent has issued.”

  12. In re Morris supports any construction of a term that is extrinsically supported and is not inconsistent with a definition or consistent usage in the specification.

  13. Let’s just start out by noting that breadth does not mean indefinite.

    “Multiple ordinary” will quite often (nearly always) be legally definite.

    Can we agree to keep that clear?

    1. “Multiple ordinary” will quite often (nearly always) be legally definite.

      That’s because claim terms often include within their scope multiple disclosed species (aka “embodiments”) consistent with the disclosed inn0vation, and most enforceable claims are asserted against people practicing one of those disclosed embodiments.

      Problems created by “multiple ordinary meanings” typically arise when one of those ordinary meanings reads on prior art that the applicant did not carefully consider in view of those “multiple ordinary meanings”. If the specification is agnostic about the existence of those meanings, it’s usually too late to fix the problem without creating additional problems (e.g., introducing new matter). In the worst case scenario, the ambiguity is so extreme (and unrecognized) that the specification contradicts itself, e.g., by presenting an “embodiment” that doesn’t represent the alleged improvement over the prior art.

      Can we agree to keep that clear?

      You should feel free to remember whatever helps you contribute to the discussion. Jason didn’t bring up indefiniteness. You did.


      1. You should feel free to remember whatever helps you contribute to the discussion. Jason didn’t bring up indefiniteness. You did.

        That is a decidedly odd comment to make. Of course I brought up the distinction between breadth and indefiniteness because that is ADDING to the conversation.

        That is what contributions are made of.

        Perhaps you should take note (rather than I).

  14. As someone who does a ton of prosecution/litigation, it makes a huge difference. In the PTO, they use BRI as an excuse to invent any construction that does not VIOLATE the spec. Examiners are fond of saying there is nothing in the disclosure that PRECLUDES a claim read. This is how they interpret “reasonable,” – by the lack of exclusion. This is of course, very different from how the rest of the world, including Courts, decide if something is “reasonable” or not. So jurists in litigation spend a LOT of time reading the spec and considering what the “reasonable” bounds are of different terms. The notion that BRI and Philips yield the same result is a blatant lie perpetuated by the PTO to not draw fire from the Courts. Now that Cuozzo is done, and the CAFC is all but toothless, I suspect they will revert to their usual practice of being fairly unapologetic about extreme interpretations.

    1. Since you do a lot of prosecution and litigation, can you tell everyone what the term “proxy” means?

      Text deleted by mod. Don’t taunt.

    2. JNG:

      The PTO loves to do this because it forces prosecutors into resorting to one of two things: (1) outright disclaim or disavow possible equivalents in the file wrapper via applicant argument; or (2) put limiting language or negative limitations into the specification. Neither of these is particularly appealing to most clients, especially when the interpretation of a claim term set out by an examiner has no semblance to anything written into the specification.

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