In re Smith Int’l (Fed. Cir. 2017)
The validity of Smith’s patent turns on proper definition of the claim term “body” as used in U.S. Patent No. 6,732,817. With the basic question being: what is the “broadest reasonable interpretation” of the term “body” as used by the patentee. In its decision here, the Federal Circuit has reversed the PTAB unpatentability conclusion (ex parte reexam) — holding that the PTO had seemingly forgotten that BRI requires a “reasonable” construction.
The patent is directed to an oil drilling tool that can collapse down to fit through a small borehole and then expand-out to fill a larger borehole. Claim 28 shown below shows that the claim basically includes two elements, a body and an arm. The claim itself does not include any further express limitations on the Body. Still, it is clear from the patent document that the claimed body is something totally different from the human figure shown above-right (from a different patent). Rather, the specification describes “a generally cylindrical tool body 510 with a flowbore 508 extending therethrough” and “one or more moveable, non-pivotable tool arms 520.”
The PTO interpreted the term in-context but still in a broad manner – finding that the term “Body” can encompass additional components such as the mandrel and cam-sleeve and noting that the specification does not actually define the term. The Board noted that the term is generic – similar to “member” or “element” that “by itself provides no structural specificity.” Here, in particular, the claim was directed to the entire tool, but only claimed two parts – the body and arm. It was perfectly reasonable, according to the Board, for the examiner to interpret Body as including other unclaimed elements of the tool. This broad definition made it easy to find the claims unpatentable based upon a single prior art reference.
On appeal, the Federal Circuit has reversed – holding that the Board’s construction was “unreasonably broad.” Here, although reasonableness is – in most circumstances – usually a question of fact, because it is part of claim construction the Federal Circuit calls it a question of law with de novo appellate review. Here, the court found that “body” should be more narrowly construed — even at its broadest reasonable scope. In reaching its conclusion, the Federal Circuit found that the Board erroneously based its broad interpretation upon the fact that the specification did not “in and of itself proscribe the Examiner’s construction.” On appeal, the Federal Circuit noted that the BRI is does not extend so far as to cover all definitions not prohibited by the specification:
The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.”
Slip op., quoting In re Morris, 127 F.3d 1048 (Fed. Cir. 1997). The court went on to reiterate that a term’s ‘broadest reasonable interpretation’ is narrower than the the logically ‘broadest possible interpretation’ of a claim.
Looking through the specification it does appear, indeed, that the patentee did not use the “body” term as a generic “member,” but used it consistently to refer to a cylindrical tool body that was separate and distinct from the other elements of the tool. However, one important issue that the court did not discuss is that of claim differentiation. Pointedly, many the claims focus on particular bodies: “tubular body”; “tool body”; and “a body including a plurality of angled channels.” The court does not consider here whether those seemingly more narrow recitations of the element should be seen as broadening the definition of the bare “body.”
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28. An expandable downhole tool for use in a drilling assembly positioned within a wellbore having an original diameter borehole and an enlarged diameter borehole, comprising:
a body; and
at least one non-pivotable, moveable arm having at least one borehole engaging pad adapted to accommodate cutting structures or wear structures or a combination thereof;
wherein said at least one arm is moveable between a first position defining a collapsed diameter, and a second position defining an expanded diameter approximately equal to said enlarged diameter borehole.