Today, USPTO Director David Kappos posted a comment advocating the use of  the broadest reasonable interpretation standard (BRI) for claim interpretation in post grant review and inter partes review under the America Invents Act.  This is a topic of great interest among those conducting post-grant review of patents because of numerous conflicts occuring in practice due to different intepretive standards used in reexamination (now also post-grant review and inter partes review) and litigation.

Recall that BRI can be contrasted with the more rigorous claim interpretation approach provided in Phillips v. AWH Corp., 415 F.3d 1303, 1315-17 (Fed. Cir. 2005).  The differences between the BRI and Phillips standards are more than academic.  Claim interpretation is intertwined with the process by which claims are interpreted.  For example, claims analyzed under the BRI standard are performed in administrative review of patent claims, such as in ex parte prosecution, reissue prosecution, ex parte reexamination and inter partes reexamination.   Claims reviewed under the Phillips standard are associated with litigation, including Markman proceedings employed in district court litigation, and appellate practice.

So, with the advent of post-grant review and inter partes review under the AIA, and given the statutory provisions coordinating federal court litigation with Office post-grant review, the question asked is whether the new system should also further embrace harmonization of judicial and administrative proceedings by adopting the same interpretive standard for patent claim construction.  Director Kappos’ post today informs us that Office favors retaining the BRI standard for post-grant review and inter partes review under the AIA.  The Office has reasons why it is not interested in adopting the same interpretive standard:

• BRI has traditionally been used by the Office,
• BRI helps the public understand the outer limits of the claims and therefore is good public policy,
• a Phillips-type construction would not be “workable or appropriate,”
• efficiency concerns with the Phillips district court approach as opposed to BRI,
• consistent with precedent, in administrative proceedings where Patent Owners can amend their claims the BRI standard is more appropriate (see, for example, In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)),
• Office use of BRI works well with the presumption of validity and the clear and convincing standard of proof applied in district court litigation (see, for example, Microsoft Corp. v. i4i Ltd., 564 U.S. ___, 131 S.Ct. 2238 (2011), and
• difficulties and inconsistencies if some Office examinations were done under BRI and some were done under the Phillips-type construction.

Director Kappos’ points are well made.  However, with all due respect to the Director, and without taking a side in the matter, it is fair to say that opponents of the use of BRI have their arguments as well.  Unlike ex parte prosecution of original patent applications where there are many options for patent applicants to attempt to obtain patent rights, reexamination, post-grant review, and inter partes review only allow for limited options for claim amendments and confirmation of claims.  

Furthermore, unlike prosecution of original applications, patent challengers in reexamination and review generally get the advantage of time for preparation of a case challenging patentability, as opposed to the Patent Owner who has to learn the prior art and the challenger’s arguments (and may want or need to respond to them) in typically shorter timeframes. 

So is the option of amendment in post-issuance proceedings as available as in original prosecution?  Some patent owners will argue that post-grant proceedings are harder on them than the challenger, and so the framework used in reexamination and review ought to be more workable to be consistent with amendment philosophy driving the decision to use BRI stated in In re Yamamoto.  And the Office through the Board of Patent Appeals and Interferences has already carved out exceptions in post-issuance proceedings where BRI is not used because the right of amendment does not exist in certain situations.  So there is some precedent for shifiting interpretive standards based on the particular facts of a reexamination.  So there are at least some arguments that the policy reasons for BRI in original prosecution are not automatically applicable to post-grant review and inter partes review.  We will explore these situations further in future posts.