We know from the Federal Circuit’s decision in In re Cuozzo Speed Technologies, that the broadest reasonable interpretation (BRI) standard applies in IPRs, but in a recent appeal decision, the Federal Circuit has announced limits to the application of BRI.
Microsoft had filed two separate IPR petitions challenging certain claims of U.S. Patent No. 6,757,717, which were later joined. The Board ultimately found all but one of the challenged claims unpatentable as being either anticipated or obvious. The Board also denied Proxycomm’s motion to amend its claims, concluding it hadn’t established the patentability of its claims. Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 and IPR2013-00109.
On June 16, 2015, the Federal Circuit reversed the Board’s constructions, and thereby vacated and remanded its determinations of unpatentability of certain claims, but upheld its decision to deny Proxyconn’s motion to amend. Microsoft Corp. v. Proxyconn, Inc. v. Michelle K. Lee, Intervenor (Fed. Cir. cases 2014-1542 and -1453).
Some of the interesting points of the Federal Circuit’s decision are:
- The Federal Circuit followed its earlier decision in Teva Pharmaceuticals USA v. Sandoz, Inc., to review the Board’s ultimate claim constructions de novo and its underlying factual determinations involving extrinsic evidence for substantial evidence. The Court stated that to the extent the Board relied on extrinsic evidence to construe the claims, it “need not consider the Board’s findings on that evidence because the intrinsic record is clear.” (Id. at p. 6.)
- The Federal Circuit clarified that even though BRI was properly adopted by PTO regulation in Cuozzo, that does not allow the Board to “construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.”
- It cited In re Skvorecz and In re Suitco Surface, Inc. to clarify that BRI cannot result in an unfettered or legally incorrect interpretation. (Id. at p. 6.)
- The Court also advised that “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review,” citing Tempo Lighting Inc. v. Tivoli LLC, In re NTP, Inc. and Suitco. (Id. at p. 7.)
The Federal Circuit then proceeded to analyze the Board’s claim constructions and decision denying Proxyconn’s motion to amend. These will be covered in future posts.