Interpreting the Interpretation of the Broadest Interpretation

By Dennis Crouch

Nestle USA v. Steuben Foods (Fed. Cir. 2017) (nonprecedential)

In its final written decision, the PTAB sided with the patentee – holding that IPR-challenged claims were not obvious.  U.S. Patent No. 6,945,013 claims 18-20 (aseptic bottling at > 100 bottles per minute).  On appeal, Nestle has successfully argued that Board incorrectly construed the claim term “aseptic.”

In Cuozzo, the Supreme Court gave deference to and agreed with the USPTO’s approach of giving claims their “broadest reasonable interpretation” (BRI) during inter partes review (IPR) proceedings.[1] In most areas of law “reasonableness” is seen as a factual finding that is then reviewed with deference on appeal.  Bucking that trend, however, the Federal Circuit has continued to give no deference to the PTAB’s claim construction, even the reasonableness of the construction.  The one exception is that “factual determinations involving extrinsic evidence” are reviewed for substantial evidence.[2]

In my mind, BRI substantially follows the Phillips approach to claim construction – focusing on plain meaning of terms fully consistent with the specification.  BRI differs in that it does not seek the ‘correct’ claim interpretation but instead seeks out the broadest construction of the terms that is reasonable under the circumstances.  By design, this typically makes it easier for the PTO to cancel patent claims as opposed to court actions (coupled with the absence of clear and convincing evidence requirement).

Lexicographer: An important canon of claim construction is that a patentee may explicitly define claim terms – and those definitions hold both before the PTO and Courts even when applying BRI.  Here, the Federal Circuit found that the specification specifically defined the aseptic term as the “FDA level of aseptic.”  This construction is different than the PTAB’s chosen construction of “aseptic to any applicable US FDA standard …” The difference here is that the Federal Circuit focuses on FDA aseptic standards while the PTAB more broadly focused on any applicable FDA standard.

Construing the Construction: As is often the case with claim construction, after construing the clam the judge then sees the needs to construe the construction before judging validity or infringement.  Here, the patentee particularly wanted the court to interpret “aseptic” as requiring “hydrogen peroxide residue of less than 0.5 ppm.”  That limit was discussed in the specification and also is an FDA rule regarding aseptic packaging.

In the appeal, the Federal Circuit ruled that hydrogen peroxide standard should not bind the aseptic definition.   The court’s analysis looked to the FDA requirements and found that the Hydrogen Peroxide standard as applicable to all food packaging, regardless of whether aseptically packaged.   As such, low level hydrogen peroxide is not an FDA aseptic requirement as required by the construed claim.  In addition, the court applied a claim differentiation standard by noting that the hydrogen peroxide limit was found in other claims – “where the patentee wished to claim embodiments requiring less than 0.5 ppm of hydrogen peroxide residue, it did so using express language.”

Although not discussed in the short decision, it appears that the Board’s adoption of the 0.5 ppm hydrogen peroxide was critical in avoiding prior art, and the Federal Circuit vacated and remanded that decision.  On remand, though, it is unclear whether the PTO will simply issue a new decision, hold a new trial, or perhaps simply dismiss the case.

= = =

[1] Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016).

[2] See Teva; Microsoft Corp. v. Proxyonn, Inc. 789 F.3d 1292 (Fed. Cir. 2015).

28 thoughts on “Interpreting the Interpretation of the Broadest Interpretation

  1. “after construing the clam the judge then ”

    Sorry to be late for dinner, but I wanted to say that in my judgment the clams are best construedled with a white wine and shallot sauce.

    Oh, and by the way – the PTAB’s construction vis-à-vis aseptic and < 0.5ppm H2O2 was nonsense, pure and simple.

  2. Night Wiper: I think we need an inquisition

    Remember, folks: NW’s bff “anon” is all about the seriousness and civility. Sure he is! He tells everybody so every week.

    And then he drools all over his bib.

    But we have to take him very seriously. After all, he “understands” why logic patents make the world goes around. That’s special.

    1. Nothing like being quoted out of context by a paid blogger.

      link to server7.kproxy.com

      I am really sick of these scientist going against the holdings of the Hon. Google Judges of the CAFC. I think we need an inquisition to bring the scientist in line with the science of the CAFC.

      1. I think we need an inquisition

        Oh please keep doubling down! You’re a very serious person.

        After all, your fantasy that Google controls the CAFC is very well-supported and s00per d00per important. We must pay attention to you! Thankfully, there isn’t any other corruption at the highest levels of government to worry about these days. There are, of course, all those critics of software patents out there who are just like “terr0rists k-lling people in Iraq.” <— yes, folks, that was NW and "anon's" high-five moment not too long ago

        LOL

  3. What a terrible opinion. Could only come from a Google selected judge.

    As to the lexicographer: Phillips says that the claims are to be interpreted in view of specification. It is just absurd to say there is a binary decision as to whether a term has been defined in the specification. That has no correspondence with the reality of how terms are used by those skilled in the art. Terms often have many meanings and the specification should be used to construe a term’s meaning where appropriate (which is often). A binary decision? Really Google Judge? Can we all just agree to start using their proper titles and refer to the Google selected judges as the Hon. Google Judge?

  4. Dennis, there is certainly support for your view that: “.. BRI substantially follows the Phillips approach to claim construction ..[but].. BRI differs in that it seeks out the broadest construction of the terms that is reasonable under the circumstances.”
    But there is not really support for: “THIS TYPICALLY [emphasis supplied] makes it easier for the PTO to cancel patent claims as opposed to court actions (coupled with the absence of clear and convincing evidence requirement).” There are far more significant causes for the difference between the two. First, because IPRs usually proceed to actually decide the argued invalidity issues, for far less than litigation costs, while less than 7% of patent suits themselves do so because all other patent suits are settled before trial. Secondly, because understandings of claim scope, prior art comprehension, and applicable law, by APJ patent attorneys, are normally very different from the understandings of lay jurors.

    1. I would also throw in there the very large impact of the stick in the bundle of a granted patent property right having been taken (the clear and convincing standard).

      But that would be just me 😉 .

      1. Yes, Dennis made that point. But, the judicial “clear and convincing evidence” requirement is often less important for an IPR outcome, where the key evidence is what is printed in rarely disputed authenticity and date of patents or publications, and not so much disputed witness testimony that must be resolved as for public use or on sale defenses, etc. [where that judicial requirement originated], and written depositions instead oral testimony.

    1. No, “An advisory opinion is an opinion issued by a court or a commission .. that does not have the effect of adjudicating a specific legal case, but merely advises on the constitutionality or interpretation of a law.”

      1. …and what would the always present “but if the first isn’t there” decision be, but not having an effect of adjudicating a specific legal case….?

        Unless you think that there is some Heisenberg effect going on…..

  5. This case contains one of the best footnotes ever.

    The Board created a two-step construction: first, purporting to apply lexicography, then using the plain and ordinary meaning as a default. But a claim term cannot mean different things simultaneously. A patentee cannot partially serve as a lexicographer for a claim term: either the specification includes a binding definition of that term by way of lexicography, or it is to be read consistent with the plain and ordinary meaning.

    The CAFC saying that a claim term cannot mean different things simultaneously? Physician, heal thyself!

    1. If the tribunal below cannot decide between two disputed claim scope definitions, is there any reason why they could not render opinions under both if the resulting decision is the same?

  6. If the “..court’s analysis looked to the FDA requirements and found that the argued Hydrogen Peroxide standard as [sic] applicable to all food packaging, regardless of whether aseptically packaged” then what difference could that make to a 103 analysis on remand?

  7. The title of this thread reminds me of the fallacy that a definitions section (full of words) would help define other words in an application – leastwise to the point that legal wranglings like present here would be eliminated.

    Turtles all the way down (the arguments would merely migrate to the definitions of the words used in the definitions section).

  8. Where does the CAFC currently stand on involving prosecution history in the BRI construction, or is that like so many other things these days, panel specific at both the CAFC and the PTAB?

    1. That was the issue at stake in one of the oral arguments this month (regrettably, I cannot remember which right now). Hopefully there will be a precedential decision to follow soon that clarifies the answer to your question.

    2. PI that was supposedly settled in the In re Philips en banc decision – as requiring a “clear disclaimer” of claim scope by applicant assertions in the prosecution history. But, as you note, that does not necessarily mean it has always be followed.
      I believe another prosecution impact question – what is the effect on remaining claims of cancelling a broader [in some respect] claim in prosecution – is still a somewhat open issue? Could someone address that?

      1. Paul, the narrow claims remain in force AFAIK. We have had reexaminations in which claim 1 has been cancelled, but claims 2-X confirmed. We could still sue on the non cancelled claims.

        Ditto new claims that depended upon cancelled claims.

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