November/December 2015
IP Litigator
By Jason E. Stach; James D. Stein
Authored by Jason E. Stach and James D. Stein
For the last three years, America Invents Act (AIA) trials before the Patent Trial and Appeal Board (Board) have been effective tools for challenging the validity of issued patents. During that time, controversy has surrounded the Board's use of the "broadest reasonable interpretation" (BRI) claim construction standard as opposed to the narrower Phillips construction standard used in district courts. In theory, the Board's broader claim construction standard makes it easier to find claims unpatentable, and critics cite the BRI standard as one factor in the Board's high invalidation rate. Others believe this controversy is much ado about nothing because most cases will not turn on which standard applies.
One area often overlooked in this debate is the construction of means-plus-function terms. Although the Federal Circuit has not addressed this issue in the context of an AIA trial, based on that court's precedent in other Patent Office proceedings, it appears that means-plus-function terms are to be given the same construction whether they are construed by the Patent Office or a district court. While the BRI versus Phillips debate likely will rage on, it should have little to no effect on the construction of means-plus-function terms.
Under the BRI standard, the Patent Office must give claims their "broadest reasonable construction consistent with the specification."1 The words of a claim are given their plain meaning unless the plain meaning is inconsistent with the patent specification.2 In contrast, district courts consider the claims, specification, and prosecution history, as well as evidence extrinsic to the patent, when construing patent claims.3 Because the BRI standard focuses on the patent specification and excludes the other types of evidence taken into account by the Phillips standard, the Phillips standard can sometimes produce a narrower construction than the BRI standard. Thus, patent owners often have urged the Board to adopt a Phillips construction when it would distinguish over the prior art better than the BRI.
Patent owners argued that the Phillips standard also should apply to AIA trials, especially when claim terms already have been construed by a district court. They noted that the AIA does not expressly identify the claim construction standard to use in AIA trials, and that the BRI standard is just an "examination expedient" used during prosecution because the applicant has the opportunity to freely amend the patent claims.4 The Board itself recognizes that its trials are "more adjudicatory than examinational, in nature," and patent owners only have a limited ability to amend the claims in comparison to patent examination.5 According to some patent owners, these characteristics of AIA trials undermine the rationale for applying the BRI standard.
The Board has uniformly rejected these arguments. The Federal Circuit recently agreed, finding that the BRI standard applies to unexpired claims in AIA trials and that the opportunity to amend claims remains available despite its limitations.6
A patent owner has several options for claiming an invention, one of which is reciting a means for performing a function as opposed to reciting a specific structure in the claim. The construction of these types of claim features, known as "means-plus-function" terms, differs from other types of claim terms because Congress defined by statute how they should be construed. The statute states that means-plus-function terms "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."7 In light of this statutory standard, some have questioned whether the Patent Office may apply a standard to its constructions of means-plus-function terms different from the one applied in district courts, as it does for other types of claim terms.
The Federal Circuit has not addressed this issue in the context of an AIA trial. It has, however, addressed the issue in the context of patent prosecution before the Patent Office. In In re Donaldson Co., Inc.,8 the Federal Circuit held that the statutory construction standard applies to Patent Office proceedings. According to the court, "because no distinction is made in [35 U.S.C. § 112] paragraph six between prosecution in the PTO and enforcement in the courts, or between validity and infringement, we hold that paragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court."9 Underscoring its holding, the court stated that "[§ 112] paragraph six facially covers every situation involving the interpretation of means-plus-function language."10
The court also found that its holding did not conflict with the principle that claims are to be given their BRI in Patent Office proceedings, because it "merely sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of 'reasonable interpretation.' Per our holding, the 'broadest reasonable interpretation that an examiner may give means-plus-function language is that statutorily mandated in paragraph six."11
Donaldson also suggested that the Patent Office has an affirmative duty to construe means-plus-function limitations, even if the applicant fails to do so. The Patent Office argued that it was not obligated to construe means-plus-function terms in view of its "sweeping and long-standing practice of not applying paragraph six during examination," which should be "entitled to deference."12 The court rejected this argument, finding that "[§ 112] [p]aragraph six does not state or even suggest that the PTO is exempt from this mandate, and there is no legislative history indicating that Congress intended that the PTO should be."13 "The fact that the PTO may have failed to adhere to a statutory mandate over an extended period of time does not justify its continuing to do so."14
Despite this strong language, the Federal Circuit has since affirmed the Patent Office's use of the BRI standard in construing a portion of a means-plus-function clause, but only because the patent applicant had not raised the Section 112, ¶ 6/Section 112(f) issue until its appeal.15 At that point, the applicant had waived the issue. A dissenting judge argued that the Patent Office was bound to its "Donaldson duties" and must perform a correct means-plus-function analysis regardless of whether the applicant raised the issue.16
Taking Donaldson and Avid together, it appears that the Patent Office is bound to apply the same claim construction standard the district courts apply to means-plus-function terms—the standard set forth in Section 112, 6/Section 112(f)—unless a party waives the construction issue. While the BRI versus Phillips controversy is slated to continue, it likely will have little to no effect on construing means-plus-function terms.
Endnotes
1 In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010).
2 Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004).
3 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
4 See, e.g., Silicon Labs., Inc. v. Cresta Tech. Corp., IPR2014-00809, Paper 8 (PTAB Aug. 22, 2014) (citing In re Skvorecz, 580 F.3d 1262, 1267–1268 (Fed. Cir. 2009); In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)).
5 Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, at 6 (PTAB Jun. 11, 2013).
6 See In re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015). A strongly divided Federal Circuit declined to rehear Cuozzo's case en banc, with six judges voting not to rehear the case and five dissenting judges contending that rehearing was necessary. Cuozzo recently petitioned the United States Supreme Court for certiorari, so this debate may continue for some time.
7 35 U.S.C. § 112(f) (or pre-AIA § 112, ¶ 6); see Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. June 16, 2015).
8 In re Donaldson Co., Inc., 16 F.3d 1189 (Fed. Cir. 1989).
9 Id. at 1193.
10 Id. at 1194.
11 Id. at 1194–1195.
12 Id. at 1195.
13 Id. at 1193.
14 Id. at 1194.
15 In re Avid Identification Sys's, Inc., 504 Fed. Appx. 885, *5 (Fed. Cir. 2013).
16 Id. at *7–8.
Reprinted with permission from the IP Litigator, published by Wolters Kluwer. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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