• Patent Applicants: Want to Avoid Broadest Reasonable Interpretation in Inter Partes Review? That’s Right - Use Means Clauses
  • August 17, 2016 | Author: Charles W. Shifley
  • Law Firm: Banner & Witcoff, Ltd. - Chicago Office
  • Everyone speaking for patent owners and applicants is crying out over broadest reasonable interpretation (BRI) in inter partes reviews (IPR) of patents. Trying as amicus to fend off the Cuozzo decision from the Supreme Court, the Licensing Executive Society (LES) likened the death of patents to BRI in IPRs as the equivalent in real estate of “an administrative system that allowed challenges” to deeds and interpreted them “for maximum invalidation” instead of interpreting them “as landowners understood and asserted them to exist, and as they would be interpreted in courts. ... The landowners would have their deeds canceled, solely on the technicality that their deeds could be hyper-inflated to cover bits of property never claimed to be owned. A taking would occur ... of land ... never claimed [and] all of the land actually owned. ... The system could be understood to make no sense.” The Federal Circuit called out the same effect of BRI in IPRs on patents, holding in PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, 815 F.3d 734 (Fed.Cir. 2016) that it was forced to affirm the IPR invalidation of a patent that would have been valid if the Court could have used the Phillips claim interpretation standard used in district courts: “The case hinges on the claim construction standard applied - a situation likely to arise with frequency. ... the claim construction standard is outcome determinative.” Result: patent invalid, solely because of BRI in an IPR.