In two recent cases, the Federal Circuit provided guidance on applying the broadest reasonable interpretation (BRI) standard for claim construction in IPR proceedings. PPC Broadband Inc. v. Corning Optical Communications RF, LLC, No. 2015-1361, 1366, 1368, 1369 (Fed. Cir. Feb. 22, 2016) (“PPC I”) and PPC Broadband Inc. v. Corning Optical Communications RF, LLC, No. 2015-1364 (Fed. Cir. Feb. 22, 2016) (“PPC II”).
In PPC I, the CAFC affirmed portions of the Board’s decision, vacated other portions, and remanded. The CAFC reviewed claim constructions for terms in claims that the Board previously found unpatentable as obvious. Recognizing that the “case hinge[d] on the claim construction standard applied—a scenario likely to arise with frequency,” the CAFC compared the constructions under the district court Phillips standard and the Board’s BRI standard.
For some claim terms, the CAFC found a difference under the two standards: “[W]hile the Board’s construction is not the correct construction under Phillips, it is the broadest reasonable interpretation . . . and because this is an IPR . . . we must uphold the Board’s construction.” Other claim terms, when properly construed, had the same definition under both the BRI and Phillips standards.
In PPC II, the CAFC vacated and remanded the Board’s holding of obviousness after finding that the Board erred in its construction of a term under the BRI standard. The CAFC reminded the Board that it must give claims their broadest reasonable interpretation consistent with the specification.
The CAFC found that the Board improperly arrived at its construction by referencing a dictionary cited by the parties and selecting the broadest definition therein. While the selected definition was the broadest, it was not the broadest when read in light of the specification: “The Board’s approach in this case fail[ed] to account for how the claims themselves and the specification inform the ordinary skilled artisan as to precisely which ordinary definition the patentee was using.”
As these decisions show, when drafting patent applications practitioners should consider whether certain terms, especially those that are essential to claiming the invention, may be interpreted differently under the BRI and Phillips standards (assuming the Supreme Court does not do away with the BRI standard in its pending decision in Cuozzo Speed Techs. v. Lee). It may make sense to specifically define such terms in the specification, so that if the patent is subsequently challenged (whether before the Patent Office or in district court litigation), a broader definition will not be applied.