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Unfortunately, contrary to the recommendations of all three of the major IP bar associations, in promulgating its implementing regulations, the USPTO specified that it would use the “broadest reasonable interpretation” approach to construing patent claims for all purposes in IPR and PGR proceedings. Since this approach mandates that only the words of the patent specification and claims are to be considered -- and thus that the prosecution history and prior statements of the patent owner may be completely ignored -- it is plainly inconsistent with the above-described portions of the AIA that require not only the consideration of the prosecution history, but also other intrinsic evidence such as the patent owner’s prior representations concerning the scopes of the claims, in construing them. As a result, instead of starting its consideration of claim scope with the benefit of what previously took place in the USPTO and the courts, the BRI approach starts all over, treating the patent claims as if they had never been examined, and as if there had never been a back and forth between the applicant and the patent examiner leading to agreements as to their meanings and patentability.

But even if the AIA had been silent on these issues, the use of a “BRI” approach would still have been inappropriate in PGR and IPR proceedings. This is because, as discussed above, the courts have authorized the USPTO to use the “BRI” approach only in cases where the patent applicant or owner has the iterative right to freely amend claims in response to rejections of them. But in both PGR and IPR, there is no free right to amend the challenged patent claims. While the AIA could have been drafted to allow the direct amendment of those claims in an examination format, as is allowed in other USPTO proceedings, it was not. Indeed, the AIA expressly eliminated inter partes reexamination and replaced it with inter partes review. Unlike

in reissue and reexamination proceedings where applicants have an unfettered right to amend their claims to avoid cited prior art,16 in PGR, IPR, and CBM proceedings patent owners do not have the right to freely amend their patent claims – they must either stand as issued or be cancelled and abandoned. While patent owners do have the right to propose substitute claims for any that have been cancelled, they are afforded a single opportunity to file a motion to submit one substitute claim for each challenged claim (and must “show the patentable distinction of the proposed amended claim over all prior art”17). Finally, a patent owner has no right to amend the patent’s claims to meet any new arguments or evidence advanced by a challenger against the proposed substitute claims, nor, as noted above, any right to amend the proposed substitute claims after learning what the USPTO’s position is on their patentability.

Why the Use of BRI Can Be Prejudicial to Both Parties

There are numerous reasons why the use of the BRI claim interpretation protocol for PGR and IPR proceedings is inappropriate and unfair to patent owners. Unlike an initial examination where a patent applicant is given the opportunity to amend the claims to narrow their scope and/or to submit new claims after receiving an examiner’s objections, in PGR and IPR proceedings, patent owners are not given any indication by the Patent Trial and Appeal Board (PTAB) of its view of the validity of their patents’ claims before they must propose amended or substitute claims. Thus, patent owners must propose amended or substitute claims without any indication from the PTAB of whether they are necessary, or how the claims might be changed to avoid an adverse ruling on validity.

The use of BRI in PRG and IPR proceedings will also unnecessarily burden patent owners by forcing them to defend their patents against challenges which would not have instituted in the first place had the USPTO interpreted the claims in the same manner as they are in district court infringement actions. While designed to be less expensive than district court litigation, defending these new post-grant proceedings still costs patent owners several hundred thousand dollars per proceeding. Such expenses should not be placed upon patent owners unless it is clear that the claims of their patents, when construed in the scope as allowed by the USPTO, are likely invalid, as otherwise required by the criteria for instating a PGR or IPR.

While often overlooked, the Office’s use of “BRI” may also prejudice accused infringers who are defending against charges brought in court that they are infringing the patent at issue. This is because once a claim emerges from a PGR or IPR review using BRI, the courts in ensuing infringement actions will have little choice but to apply the broader PTAB claim construction, especially if it has been affirmed by the Federal Circuit. By then, the proceedings of the PGR or IPR will themselves have become part of the patent’s prosecution history and under current claim construction law will be required to be considered and taken into account by the courts in interpreting the claims. The result will be that a broader claim construction for infringement purposes will be applied than would have been applied had BRI not been used in the PGR or IPR review. As a consequence, some accused products that would not have been found to be infringing will be, and further uncertainty will be injected into the system, defeating the patentee’s and public’s rights to rely upon the original (limited) scopes of issued patents when designing, developing and marketing their commercial products.

Conclusion

It makes no sense to interpret the scope of a patent one way in court or before the ITC, and in a different way before the USPTO in an IPR or PGR proceeding. Assuming the evidence is the same in both places, patents that would be found valid in court should be found valid in IPR or PGR proceedings, and vice versa. It is a fundamental tenet of patent law that issued claims being adjudicated should be interpreted the same for purposes of determining validity and infringement.

Nor is there any reason to ignore the effort and expense invested by the patent applicant and USPTO during the original examination of a patent, in favor of an approach that starts over at the beginning, as BRI does, instead of where the USPTO left off at the time it concluded the patent should be granted. The “BRI” approach injects a high degree of uncertainty into the patent system, and undermines the innovator community’s right to rely upon the USPTO’s grant of a patent as providing the kind of protections upon which investments can be made, factories be built and people be hired. By the same token, once a patent issues, the public’s right to rely on the scope of the patent as determined by the USPTO should not be abridged, as the public may wish to negotiate for licenses to the patent, or rely upon limitations in those claims in designing around them to produce and market competitive products.

Section 9(b) of HR 3309, the “Innovation Act,” and section 7(b) of S. 1720, the ‘‘Patent Transparency and Improvements Act of 2013,’’ restore the balance envisioned by Congress when it established these new procedures and ensures that fair and uniform claim interpretation rules will be applied to patent claims involved in all adjudicatory proceedings, whether in federal courts or in the new IPR and PGR reviews in the USPTO. For the same reason, the use of BRI should not continue in CBM review proceedings. The Coalition for 21st Century Patent Reform strongly supports these corrective measures.

CoaThe Coalition has approximately 50 members from 18 diverse industry sectors and includes many of the nation’s leading manufacturers and researchers. The coalition’s steering committee includes 3M, Caterpillar, General Electric, Johnson & Johnson, Eli Lilly and Procter & Gamble.
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