BRI AND P ATENT P ROSECUTION Charles Bieneman | January 19, 2017
“B ROADEST R EASONABLE I NTERPRETATION ” – W HAT AND W HY 2 • “During patent examination, the pending claims must be ‘given their broadest reasonable interpretation consistent with the specification.’” MPEP § 2111. • Same in ex parte prosecution as in IPRs: “[T]he Board may [not] construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F. 3d 1292, 1298 (Fed. Cir. 2016). • “Because applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified.” MPEP § 2111. Visit The Software IP Report at swipreport.com.
Q UICK R EFRESHER ON C LAIM C ONSTRUCTION B ASICS 3 • Claim terms should receive their plain and ordinary meaning in light of the Specification: “Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” • Phillips v. AWH Corp., 415 F. 3d 1303, 1315 (Fed. Cir. 2005) ( quoting Vitronics Corp. v. Conceptronic, Inc., 90 F. 3d 1576, 1582 (Fed. Cir. 1996). • Specification can “reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess” or “may reveal an intentional disclaimer, or disavowal, of claim scope.” • File history is also intrinsic evidence. • “[E]xtrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.” Visit The Software IP Report at swipreport.com.
W HAT I S B ROADEST R EASONABLE I NTERPRETATION ? 4 • A protocol? • “The protocol of giving claims their broadest reasonable interpretation . . . is solely an examination expedient, not a rule of claim construction.” In re Skvorecz, 580 F. 3d 1262 (Fed. Cir. 2009 (Newman, J.)). • Or a “standard?” • See Cuozzo Speed Technologies, LLC v. Lee, No. 15-446 (S. Ct. June 16, 2016), slip op., at 6; Microsoft Corp. v. Proxyconn, Inc., 789 F. 3d 1292 ( passim ) (Fed. Cir. 2016) (Chief Judge Prost). • Who cares ? Visit The Software IP Report at swipreport.com.
W HY B E A FRAID OF BRI? VERITAS TECHS. LLC V. VEEAM SOFTWARE CORP. (AUG. 2016) 5 Claim 20, US 7,024,527: A computer-accessible medium comprising program instructions [that] are configured to implement: a restore application starting a restore of a set of files from a backup storage to a primary storage; during said restore: a file server determining that one or more blocks of data of a file in the set of files needed by an application have not been restored; and the file server directing the restore application to restore the determined one or more blocks of data in response to said determining that the one or more blocks of data have not been restored; and the restore application restoring the determined one or more blocks of data; wherein the restored one or more blocks of data are accessible by the application while said restore is in progress. Visit The Software IP Report at swipreport.com.
A NYTHING Y OU D ON ’ T S AY W ILL BE U SED A GAINST Y OU 6 • Does “a restore application starting a restore of a set of files from a backup storage to a primary storage” encompass a “block-level” restore as well as a “file-level” restore? • PTAB, in an IPR proceeding, held that, under a BRI, the claims “do not require file-level knowledge or a file-level restoration.” • Federal Circuit agreed with the PTAB. • Veritas Techs. LLC v. Veeam Software Corp., No. 2015-1894 (Fed. Cir. Aug. 30, 2016). Visit The Software IP Report at swipreport.com.
W HAT IS B ROAD I S R EASONABLE ?! 7 • Federal Circuit: “starting a restore of a set of files” could have “a broader reading, under which the language would cover a restore at the block level as long as that process will result in restoring a set of files, as by restoring an entire disk that contains complete files. Starting a restore that results in restoring a set of files is one reasonable reading of ‘starting a restore of a set of files.’” • Patent explained no material difference between file-level and block-level restoration nor distinguished between the two with respect to prior art. • Record showed that “in many instances” the prior art “block level restoration process will result in a restoration of a set of files.” à BRI of prior art or patent claims?!?!? • PS – denying entry of amendment in an IPR was arbitrary and capricious. • But see D’Agostino v. Mastercard International. Inc., No. 2016-1592, 2016-1593 (Fed. Cir. Dec. 22, 2016 (BRI must be logically consistent.) • See http://swipreport.com/broadest-reasonable-interpretation-of-patent-claims-must-be-logically-consistent/ Visit The Software IP Report at swipreport.com.
C LAIM I NTERPRETATION IN E XAMINATION 8 Orientation step, not an interpretation step; see MPEP § 2111.01(V) Visit The Software IP Report at swipreport.com.
ORDER OF OPERATIONS 9 Preliminary – assume 112(a) is satisfied. 1. Is meaning clear from claim (because plain and ordinary or because the claim defines the term)? 2. Is meaning stated (or modified) by Specification? 3. Is meaning implicit from Specification? 4. Extrinsic evidence to show meaning ascribed by those skilled in the are at the time of the invention? 5. Disavowel? Visit The Software IP Report at swipreport.com.
10 PRACTICE TIPS Visit The Software IP Report at swipreport.com.
PRACTICE TIPS 11 Define claim terms in specification. 1. -- For terms not terms of art, consider defining in claims. Rely on implicit disclosure in specification. 2. Plain and ordinary meaning is a fallback. 3. Extrinsic evidence is a last resort. 4. Avoid disavowels. 5. Don’t be afraid to construe the claims (especially in pre-appeals and 6. even more especially in appeals). -- Look first to the claim for the meaning of claim terms. -- Rely on the Specification. Visit The Software IP Report at swipreport.com.
PRACTICE TIP #1 AND #6 DEFINE TERMS AND USE YOUR DEFINITIONS 12 A. Define terms in specification. B. Don’t be afraid to rely on your definitions in prosecution. 1. Give the examiner something on the record pointing to the definition of the disputed term. 2. Formally construe terms (at least in Appeal Briefs). Visit The Software IP Report at swipreport.com.
EXPLICIT DEFINITION IN SPECIFICATION EX PARTE TOMES, APPEAL 2011-004923 (JULY 9, 2012) 13 1. A disposable urine collection device to be used by a person, said device comprising: a shell having an inner surface; an absorbent pad attached to said shell; said absorbent pad having a shape adapted for generally conforming to said inner surface of said shell; * * * Visit The Software IP Report at swipreport.com.
EXPLICIT DEFINITION IN SPECIFICATION EX PARTE TOMES, APPEAL 2011-004923 (JULY 9, 2012) 14 ¡ Examiner : “Shell” is a diaper holding in place an absorbent insert. ¡ Appellant : Specification forecloses examiner’s interpretation. ¡ BPAI: REVERSED Section 102 rejection. § Specification stated that a “‘[s]hell’ means a generally concave structure that tends to retain its shape over a substantial period of time.” § Examiner was wrong that the broadest reasonable interpretation of claimed “shell” encompasses a “diaper.” Visit The Software IP Report at swipreport.com.
EXPLICIT DEFINITION IN SPECIFICATION EX PARTE LOYD, APPEAL 2011-001167 (MAY 2, 2012) 15 A “packaged tampon and applicator assembly” comprised: a wrapper having a line of weakness formed therein at least in part inward of said sealed edge and in direct contact with the interior space of the wrapper in the sealed configuration thereof, the line of weakness having a longitudinal component extending longitudinally of the wrapper and a transverse component extending transversely of the wrapper, said line of weakness being adapted to facilitate tearing of the wrapper along said line of weakness to facilitate opening a portion thereof to provide an opening in said wrapper through which the tampon and applicator assembly is removed from the wrapper, said wrapper being further configured to inhibit separation of said opened portion from the wrapper. Visit The Software IP Report at swipreport.com.
EXPLICIT DEFINITION IN SPECIFICATION EX PARTE LOYD, APPEAL 2011-001167 (MAY 2, 2012) 16 ¡ Examiner: “Line of weakness” is disclosed by a zipper and groove path. ¡ BPAI : REVERSED Section 103 rejection. § Specification defined a “line of weakness” as “any defined (e.g., intended) structural feature which weakens the wrapper 20 along a predetermined path so that the wrapper 20 is more readily ruptured, or torn, upon application of a tearing force along the line of weakness.” § Disclosed embodiments included “a plurality of separation points, a score line, a breakaway line or areas, a chain stitch, a thinning of the wrapper material.” § No disavowal: Nothing in the Specification “suggests that a line of weakness may encompass a zipper. A zipper opens and closes, but is not a point of “weakness” per se. A zipper is not designed to break, rupture or tear, but rather to open and then close again intact.” Visit The Software IP Report at swipreport.com.
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