Broadest Claim Interpretation Is Not Necessarily the Correct Construction Under Phillips or Under BRI

In related appeals, the Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s invalidation of 49 claims across three patents challenged in Inter Partes Review. PPC Broadband, Inc., v. Corning Optical Comms. RF, LLC, Nos. 2015-1361, -1366, -1368, and -1369 (Fed. Cir. Feb. 22, 2016) (“PPC I”) and PPC Broadband, Inc., v. Corning Optical Comms. RF, LLC, No. 2015-1364 (Fed. Cir. Feb. 22, 2016) (“PPC II”).

In both decisions, the same panel highlighted differences between the “broadest reasonable interpretation” (BRI) standard applied by the PTAB and the Phillips standard applied by district courts. The PTAB’s use of BRI has been upheld by a divided Federal Circuit and is awaiting Supreme Court review. See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed. Cir. 2015), cert granted, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016).

In PPC I, for a majority of the claims, the Federal Circuit held that the PTAB overlooked a key claim limitation, and it therefore vacated and remanded the PTAB’s obviousness decision. For the remainder of the claims, the Federal Circuit affirmed the PTAB’s claim construction as the broadest reasonable interpretation, but noted that it was not the “correct” construction under Phillips. Here, the court commented, “the claim construction standard is outcome determinative.” Should Cuozzo be reversed by the Supreme Court, the outcome in PPC I could be disrupted on remand.

In PPC II, the Federal Circuit vacated a PTAB claim construction for being unreasonable. According to the court, “[t]he Board seems to have arrived at its construction by referencing the dictionaries cited by the parties and simply selecting the broadest definition therein. […] While such an approach may result in the broadest definition, it does not necessarily result in the broadest reasonable definition in light of the specification.” (Emphases added.) The Federal Circuit also stated that the canon that different terms must have different meanings is inapplicable to terms in non-limiting preambles. Finally, the court rejected Corning’s argument that the BRI is that interpretation which includes as many disclosed embodiments as possible, holding that there is no requirement for “each and every claim [to be] interpreted to cover each and every embodiment” under the BRI standard. Merely covering the most embodiments does not make a construction reasonable. The Federal Circuit thus vacated and remanded the invalidity determination for analysis under a corrected claim construction.

Some have argued that the difference between the BRI and Phillips standards is largely theoretical and not outcome-determinative, but PPC I is one example where that is not true.