Federal Circuit decision nudges patent examiners to be reasonable

December 13, 2017

Although it only affirms what has been said before, a September decision from the Federal Circuit Court of Appeals is nevertheless surging in popularity among inventors and their attorneys because it reminds the U.S. Patent and Trademark Office that the standard of “broadest reasonable interpretation” for evaluating patent applications does not mean “broadest possible interpretation.”

Linzer Linzer

“It gives us a tool to kind of slap an examiner’s hand a little bit,” patent attorney John Linzer said, summarizing the decision in In re: Smith International, Inc. Linzer is a member of the intellectual property practice group at the Chicago office of Quarles & Brady LLP.

Since the ruling was handed down, it has been cited more than a dozen times in patent proceedings. Intellectual property attorneys expect that trend will continue particularly because they say that the 18-page decision is clear and straight to the point.

The simple message from Smith is that patent examiners must consider the entire patent document when deciding whether to grant the patent or maintain a patent’s validity.

Sections of the patent application include drawings, the specifications, which describes the invention, and the claims, which captures the concept of what the device does and does not do. In reviewing applications, patent examiners use the broadest reasonable interpretation standard when examining the claims portion. The Patent Office maintains this helps properly establish the scope of the claim and reduces the possibility the patent, once issued, will be interpreted more broadly than justified.

In Smith, the unanimous Federal Circuit panel reminded the patent office that the interpretation of the claims must be consistent with the specifications. That decision echoed the Federal Circuit’s en banc ruling in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).

Linzer is familiar with how patent claims can get oddly construed during the examination process. He noted one instance where the inventor had used the word “coupled” in the patent application. Even though the application indicated that “coupled” meant “connected together,” the examiner opened the dictionary and determined that “coupled” means “touches,” an interpretation so broad that a pad of paper lying on a desk could be said to be “coupled.”

Janis Janis

Now, Linzer and his team are, like a growing number of attorneys, pointing to the Smith decision to rebut the examiner’s conclusion.

Mark Janis, director of the Center for Intellectual Property Research at Indiana University Maurer School of Law, anticipates Smith will be cited anytime the broadest reasonable interpretation is used.

“(Smith is) one of those cases likely to be cited a lot by applicants in the future because what it tried to do is send a signal to the Patent and Trademark Office to be careful about applying the broadest reasonable interpretation standard to claims,” Janis said.

‘Body’ and farm plows

The Smith case involves two long-feuding energy companies, Smith International and Baker Hughes, Inc., that regularly fought over patents. Things came to a head when Smith filed a complaint in federal court, alleging Baker was infringing on its U.S. Patent No. 6,732,817, which covers an oil and gas drilling tool called the “Expandable Underreamer/Stablizer.”

In response, Baker Hughes filed a petition with the U.S. Patent and Trademark Office for an ex parte re-examination of certain claims in the patent. A patent examiner ruled the disputed claims in the patent were invalid, and the Patent Trial and Appeal Board affirmed.

Smith appealed to the Federal Circuit, which reversed the PTAB ruling.

The appellate court found that the patent examiner had taken a broad view of the term “body” in the disputed patent and included other components of the drill such as the “mandrel” and “cam sleeve.” Also, the PTAB had asserted that since the specifications accompanying the claim did not expressly exclude any of the other elements as being part of the “body,” the examiner could include those components.

Describing the examiner’s interpretation of the term “body” as a “strained construction,” the Federal Circuit held the claims were patentable.

The court not only reminded the Patent Office to consider the claims in context of the entire application but also trounced the notion of considering whatever was not specifically included in the specifications. Such a practice, the court said, would result in the “broadest possible interpretation” despite the descriptions in the written disclosure.

Janis believes the decision helps bring some needed uniformity to the different standards used by the Patent Office and the courts. While the patent examiners rely on the broadest reasonable interpretation, which has never been clearly defined, judges use the “litigation construction,” which interprets the claim through the plain and ordinary meaning of the terms.

“I applaud cases like Smith that seek to reign in the broadest reasonable interpretation standard in a way to make it a little more like the litigation construction,” Janis said.

Gallagher Gallagher

Attorney Douglas Gallagher, partner at SmithAmundsen LLC in Indianapolis, caught himself nodding in agreement as he read the Smith opinion. He said patent examiners can “think incredibly broadly about very simple things” when considering applications. They will split devices into their different components, cobble the separate pieces together and then reject the patent application because the cobbled-together item can perform the same function as a device already on the market.

As an example, Gallagher pointed to a patent application for a machine that could cut through casts like those wrapped around broken arms and legs. Through splitting and cobbling, the patent examiner arrived at the conclusion that the machine was like a farm plow.

The examiner’s reasoning, Gallagher explained, followed that the machine can cut through a layer of material. Since soil is a layer of material and plows cut through soil, the cast-cutting invention is like the farm implement.

Garage inventors

Brannon Brannon

The move by Baker Hughes to challenge the validity of a patent when facing an infringement lawsuit is a common tactic. C. John Brannon, attorney and CEO of Brannon Sowers & Cracraft PC in Indianapolis, explained that if the patent is found to be invalid, then the lawsuit dies, which saves the accused infringer having to fight a costly court battle. However, if the patent is upheld, it will be very difficult to convince the court the patent has no merit.

With 20 years’ experience prosecuting patents, Brannon has found patent examiners, generally, are reasonable people who can be persuaded by cogent, logical arguments. Well-written specifications should provide the examiner with guidance on interpreting the terms in the claims but, he noted, the writing is not always clear, and deadlines can be tight, so the examiner might only look at the drawings and the claims.

Other attorneys made similar observations. They said patent examiners are likelier get scolded for approving a bad patent application than for stopping a meritorious one. The trend of being extremely cautious can be traced back to the mid-2000s, when businesses began pressuring the Patent Office to quit accepting bogus applications from patent trolls.

Now the broadest reasonable interpretation is raising more questions since the American Invents Act of 2011 makes challenging a patent examiner’s decision easier for less affluent applicants. The Smith decision, Gallagher said, gives a boost to the small inventors who tinker in their garages and workshops. If a “finicky examiner” gets too extreme and the process of arguing becomes too costly, the inventor can roll out the popular Smith decision.•



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