Reviewing PTO Claim Construction: Calls for De Novo Review of Proper Standard

By Dennis Crouch

Flo Healthcare v. Kappos and Rioux Vision (Fed. Cir. 2012), Inter Partes Reexamination No. 95/000,251.

In an interesting three-way opinion, the Federal Circuit has affirmed the USPTO’s rejection of Flo’s reexamined patent claims. In the process, however, the court provided significant additional guidance for the PTO on when claim elements that do not include the magical word “means” should nevertheless be interpreted as means-plus-function elements. See 35 U.S.C. 112(6). Here, the court found that the claim term “height adjustment mechanism” as used in the context of the patent specification should not be interpreted as a means-plus-function element.

Senior Judge Plager wrote the unanimous majority opinion and also filed a concurring opinion with “additional views” regarding appellate review of PTO claim construction Judge Plager argued that Federal Circuit precedent is unclear:

[W]e now appear to have two contradictory lines of authority on the question of how this court reviews Board claim constructions—a deferential “reasonable” (arbitrary/capricious-type) review, and a no-deference “pure” law type review. [Compare In re Morris, 127 F.3d 1048 (Fed. Cir. 1997) with In re Baker Hughes, 215 F.3d 1297 (Fed. Cir. 2000).] The fact that the APA now governs our review of PTO decisions does not provide guidance on which is the right standard. This is because the APA itself provides one standard for “pure” questions of law—which are reviewed without deference—and different, more deferential, standards for questions of fact and for mixed questions of fact and law.

The question then becomes whether claim construction by the Board is to be considered a question of “pure” law—the way this court treats claim construction in district court litigation under Cybor—and thus to be reviewed without deference; or whether it is something else, a blend of law and fact and judgment—as the Supreme Court said in Markman, a “mongrel practice”—in which case it is at least arguably subject to the “arbitrary and capricious” standard of APA § 706. Interestingly, none of the cases applying the Baker Hughes no-deference standard has paused to explain why that is the preferable standard as a matter of law or policy, or how it relates to the review standard that the Board uses.

Three additional factors weigh relatively in favor of deference toward PTO claim construction decisions even if court claim construction decisions continue to be reviewed de novo. First, claim construction at the PTO is decided initially by technical fact finders (patent examiners) and then by mixed fact/law specialists (PTAB judges). Second, the PTO’s form of claim construction “broadest reasonable construction” is a factual standard as is (virtually) any reasonableness judgment. Finally, the Supreme Court’s placement of decision making authority with a judge rather than a jury (Markman) that led to the Cybor no deference standard is tangential to the PTO’s role in claim construction. The decision makers in patent prosecution are defined by statute and codified rules rather than by the Supreme Court.

Judge Plager does not here suggest that one approach is correct, but does argue in favor of en banc rehearing to provide clear guidance to patentees and others concerned with patent rights. Judge Plager also offers an apology for the confusion since he authored the Morris opinion and was on the Baker Hughes panel.

This case involves a direct challenge to PTO claim construction decisions. The next step removed will involve collateral challenges during infringement litigation. In that case, what deference should be given to PTO conclusions at the time of the patent grant?

Judge Newman also agreed with the majority decision and provided her own additional views on the topic of the “broadest reasonable interpretation” standard used in patent prosecution. Judge Newman argues that the PTO should conduct claim construction applying the same standard as a court would later in litigation. The problem, according to Judge Newman is that the “broadest reasonable interpretation” is being applied as a standard of claim construction whereas it is actually merely an “examination protocol, not a rule of law.”

In its implementation, the examiner starts with a blank slate on which the applicant has described the subject matter he wishes to patent. The examiner is charged with searching the entire world knowledge, and to decide what the applicant is entitled to claim, as a matter of law. See Manual of Patent Examining Procedure §706 (“After the application has been read and the claimed invention understood, a prior art search for the claimed invention is made.”). In this demanding process, the examiner views the applicant’s presentation broadly, in order to assure that all possibly relevant prior art is explored. That is the role of “broadest reasonable interpretation”: it is an examination tool whereby the applicant and the examiner work together to determine and define the “invention” to be claimed.

Regardless of the path used to get there, Judge Newman argues, the claim construction is either correct or it is incorrect and it is the Federal Circuit’s role to make that determination accurately and uniformly. Thus, Judge Newman sees an acute problem in situations such as this case “where the same issue can be finally adjudicated to different appellate outcomes, depending on the tribunal from which it came.” An en banc hearing is also requested to remedy this “pernicious” conflict.

Notes:

  • The infringement lawsuit between these parties was filed in 2007 (the same year as the inter partes reexamination request). That litigation settled in 2010, but there is not a clear mechanism for settling inter partes reexaminations once they get rolling. The new inter partes reviews can be settled.

28 thoughts on “Reviewing PTO Claim Construction: Calls for De Novo Review of Proper Standard

  1. 28

    You leave out problem (3) that so many Examiners read the word ‘reasonable’ out of BRI. On our side of the fence we call it ‘Broadest Unreasonable Interpretation’.

  2. 27

    We need the Fed. Cir. to address this issue so that we can get rid of BUI and nonsensical “precedential” decisions of the BPAI/PTAB like Miyazaki.

  3. 26

    Your accusation of me being confused does not answer my question. It is a rather simple and straight forward question. Surely you can answer it in a forthright manner.

  4. 25

    You’ve been informed of this already, anon, but let’s try it again: we are free to discuss claims and legal issues relating to the examination of claims in the manner that is most clear to us.

    Most assuredly NOT if by clear you mean muddled – especially as is evident on recent threads such is not in the personal views of the posters. This violates two different rules that Prof. Crouch has set forth. So the simple and direct reply is that NO, you cannot do so under the guise of “most clear to [you].”

    As I posted, there is a reason why in the real world an article written 50 years ago is still pertinent today, and that reason is the agenda driven by those who would hide under “most clear to [you]”

  5. 24

    Your response is not an answer to my post, and barely serves as a cheap cover for your insult of accusing others of that which you do.

  6. 23

    Per the Judge, “adjustment … has a reasonably well-understood meaning as a name for a structure.”

    Absurd.

  7. 22

    you seem to confuse, or better, seem to want to confuse the issue of whether the claim as a whole is novel with what it is that is new.

    More accurately, anon seems to want to conflate the issues so anon can accuse you of misapplying the law.

    It’s an old trick, getting older by the minute.

    You’ve been informed of this already, anon, but let’s try it again: we are free to discuss claims and legal issues relating to the examination of claims in the manner that is most clear to us. There is no question that many (most? all?) claims consist of new elements and old elements. We are free to discuss those elements individually and we are free to discuss their relationship to the prior art and how that relationship affects the manner in which we (here, in the comments) and others, including examiners and judges, approach those claims now and/or should approach those claims in the future. By doing so, we break no laws. If you are offended by this, please go elsewhere. Thanks.

  8. 21

    Read 102, Anon.  Where in there is anything at all mentioned about "whole."  Next, Halliburton was about "112," not "102."

    Don't conflate, confuse, misdirect, obfuscate, mislead, or even get things upside down and backwards as is your wont.

  9. 20

    Old combination:

    A + B + C + D.

    I improve D.

    The  combination old.  The novelty is in the improvement.

    Anon, you seem to confuse, or better, seem to want to confuse the issue of whether the claim as a whole is novel with what it is that is new.

  10. 19

    “The invention”

    Under which statute is that…?

    (Specifically – and with an eye as to why 103 was created as a statute)

  11. 17

    anon, only if the functional element was construed to cover coefficient from the particular method of calibration.

    Trust me, anon, in most cases, it is the defendant that urges reading claim limitations into the claim to avoid infringement.  It simply is not done to avoid infringement.  Nor should it be done to avoid prior art.

  12. 16

    The combination could be novel.

    But it does not mean that all combinations are the invention.  In Halliburton, the novelty was in the one element, the combination being old.  

    Why don't you finally read Faulkner v. Gibbs.  If you do, tell us what it says.

  13. 15

    Exactly right Fish (assuming “good decision” is intended sarcasm). Leaving aside the standard of review issue, Judge Plager held “adjustment” is sufficient structure in “a height adjustment mechanism for altering the height of the tray” to overrule the PTO’s holding that it is subject to MPF analysis. Per the Judge, “adjustment … has a reasonably well-understood meaning as a name for a structure.” Really? Like “colorant selection”? In support, he cited an equivocal dictionary definition (the third one it provided), and a half-dozen structures listed in the patent specification (“among others”) that functioned to alter the height of the tray. Of course, if you’re going to look at the specification to see if “height adjustment mechanism” is described in a manner that includes structure, and thus, not subject to MPF, two results are possible: (1) You’ll find it (in which case, no MPF); or (2) you won’t (in which case, the claim is invalid as indefinite). Curious.

  14. 14

    specification contained a clear disavowal however. That prior art was discussed, its problems noted, and an “integrally formed” acoustic reduction means, namely thinning, was described to be the invention.

    Actually, “integrally formed” was described to be the invention. That’s what the claims do. There was no “clear disavowal” of other integrally formed embodiments. There were mistakes by the attorney. Fatal ones.

    Claim drafting is not a pointless exercise.

    the patentee never wants to amend the claims for any reason because of intervening rights

    Boo hoo.

  15. 12

    gave no particular novelty to this element.

    This commercial brought to you by _____ .

    Ned, what happens when ALL elements are of themselves not novel?

  16. 11

    Malcolm, I will agree in principle with the proposition that the problem emerges when a reference is cited and the claim as construed reads on it. But I think the urgency of the claim construction dispute primarily arise in reexaminations or reissues where the patentee never wants to amend the claims for any reason because of intervening rights. I really don’t believe this is typically a “lack of support” issue for a narrowing limitation.

    Take Morris for example. The invention related to reducing disk drive noise caused by motors. The point of novelty was claimed as “integrally formed as a portion of” the disk drive casing. The preferred embodiment showed thinning the casing around the point of motor attachment. The prior art showed clamping a pad to the casing. The claims, limited to thinning, were allowed. The examiner read “integrally formed” to read on the prior art sandwiched pad. The specification contained a clear disavowal however. That prior art was discussed, its problems noted, and an “integrally formed” acoustic reduction means, namely thinning, was described to be the invention.

    Plager wrote for the Morris court that the construction was “reasonable” given extrinsic evidence that sandwich structures had been described to be integral. He refused to limit the construction to thinning or to recognize the disavowal.

    But, if the claim had instead come out of District Court instead? I think the claim would have not been construed to cover a sandwiched pad of he prior art due to the clear disavowal given in the specification and in the prosecution history.

  17. 10

    Can’t argue with that, MM. The EPO uses the BRI tool too, and very effectively, to ease Applicants into a clarified claim wording that is unambiguously eligible and patentable. The statutory task of Examiners at the EPO, before they allow claims through to issue, is to ensure that they meet ALL the requirements of the EPC. One of them is that the claims be “clear”. Clear claims are unambiguous. Unambiguous claims have only one meaning.

  18. 9

    Ned: Such limitations, however, were not in the claim. What the court did was to read them into the claim to preserve validity. If this is proper, why not do the same in the PTO? What is the difference?

    Rest assured that if the USPTO had given the Applicant a choice between narrowing the claim expressly (by amendment) or having no patent at all, the claim would have been narrowed. And that’s what should have happened.

    The key phrase in your comment is “if this is proper.” Of course it’s not a proper. It turns claims into a joke or, as the Supreme Court might say, it turns claims into “dead letters.”

  19. 8

    If there is such support, the examiner is obliged to construe the claim thus. If there is no such support, the examiner may support his definition with extrinsic evidence.

    On appeal, what is the standard of review?

    Clearly it must be the proper construction, not whether the examiner’s initial construction was reasonable.

    The phrase “standard of review” seems inappropriate for most of these claim construction disputes. The issue is the proper construction, period, not whether the construction was “reasonable” or not. And correct me if I’m wrong but isn’t this only an issue when there is prior art reading on the claim and the applicant is unable to amend around the art (e.g., lack of written description support) and is forced then to try to limit the claim by argument about the definition of one or more terms? In that situation, it does seem that if the Examiner’s construction is more reasonable than the Applicant’s construction, it doesn’t matter if the Examiner’s construction is “the broadest” or “the narrowest” construction. The Applicant is screwed.

  20. 7

    This case is remarkable on another point. The claim term was in fact functional. It covered any structure that did the claimed function despite what the court said to the contrary. The specification did list all sorts of structures that could perform the function recited.

    What the court did was read the claim language for its full breadth because the claim element was “old” and many examples of workable structures were recited. That is the way it should be.

    However, in a case just a few days ago* involving a hearing aid and a circuit that had a programmable filter for reducing acoustic feedback. The prior art showed the identical circuit including the programmable filter.

    However, bizarrely, the Federal Circuit held the prior art circuit did not anticipate because the way the programmable filter was calibrated was different. Such limitations, however, were not in the claim. What the court did was to read them into the claim to preserve validity. If this is proper, why not do the same in the PTO? What is the difference?

    Both Plager and Newman argue for one standard of construction. I agree.

    I cannot see how one can reconcile these two cases.

    * ENERGY TRANSPORT v. WILLIAM DEMANT link to cafc.uscourts.gov

  21. 6

    You’ll say that’s a hopelessly naive and idealistic view, impossible to enact in the USA.

    Actually, I wrote in the same comment that it’s a “reasonable” view. By “idealistic”, I meant only that’s it’s far easier to propose than to put into practice, at least in such a way that one ends up with the ideal result (i.e., all claims construed in consistently identical fashion by both the USPTO and the court), for the reasons I gave (there are more reasons that I didn’t list).

    As I’ve stated before, I think the objections to the use of BRI are overblown and the USPTO’s constructions at the end of the process are at least as reasonable as the constructions given by courts. The bigger problems in my view are (1) poor claim drafting; and (2) failure of the courts (including the CAFC) to follow the law set forth in Phillips.

  22. 5

    “Initially”

    That is the key.

    As described in In re Morris, in his initial review of the claims, the examiner uses BRI. The applicant must then respond with arguments against the art, or he must contest the construction. If the latter, he must show support for the particular interpretation in the specification in terms of definitions and or consistent usage. If there is such support, the examiner is obliged to construe the claim thus. If there is no such support, the examiner may support his definition with extrinsic evidence.

    On appeal, what is the standard of review?

    Clearly it must be the proper construction, not whether the examiner’s initial construction was reasonable. In its ultimate conclusion, Morris was wrong, and Judge Plager knows it was wrong.

    Once again, Newman is right.

  23. 4

    fish,it made no difference. Even if it were a MPF claim, the corresponding structure was generically described as any structure that would perform the function, giving examples. The specification gave no particular novelty to this element.

    What the patentee tried to do was pick one out of many. It turned out, it seemed, that one example was new. So rather than limit the claim to the particular example, they tried to rely on 112, p.6. But that came a cropper at the Board. Ditto at the Federal Circuit.

  24. 3

    I will not be able to read the Decision till tomorrow but I’m not going to let that stand in the way of picking up MM’s use of the word “idealistic”.

    I find it difficult enough to arrive at a single meaning of the claim, good for both validity and infringement, without having to get my mind around the additional complexity of more than one meaning. I don’t know about “idealistic”. Me, I think that to be required to go for just one true meaning is not so much idealistic as efficient, pragmatic, and likely to enhance legal certainty, clearance confidence and business planning.

    You’ll say that’s a hopelessly naive and idealistic view, impossible to enact in the USA. But it’s how it is in Europe, aand it’s what I’m used to. And it works.

  25. 2

    “claim term “height adjustment mechanism” as used in the context of the patent specification should NOT be interpreted as a means-plus-function element” — good decision

  26. 1

    In this demanding process, the examiner views the applicant’s presentation broadly, in order to assure that all possibly relevant prior art is explored. That is the role of “broadest reasonable interpretation”: it is an examination tool whereby the applicant and the examiner work together to determine and define the “invention” to be claimed.

    A ringing endorsement of the BRI process. Good for Judge Newman. Judge Newman should also recognize that when the Applicant refuses to reasonably participate in the process that the USPTO’s broad reasonable construction should rule the day.

    Judge Newman argues that the PTO should conduct claim construction applying the same standard as a court would later in litigation.

    That seems reasonable. The problem with this idealistic proposition is that courts in litigation are typically presented with very different (typically extrinsic) information than that presented to Examiners at the USPTO. One example is statements by the patentee in court papers as to what elements of an infringer’s product read on particular claim terms. Other examples include relevant admissions made in cases relating to other similar patents owned by the same applicant that were not revealed to the USPTO (for any number of reasons).

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