Takeaway: Although the Patent Trial and Appeal Board (“PTAB”) is to construe patent claims under the “broadest reasonable interpretation,” in practice, the PTAB does not allow the broadest “possible” interpretation and seems to be limiting the claim’s meaning in view of the prosecution history, which is in line with how the courts perform claim construction as well.
Last year, in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), the Supreme Court stated that the PTAB was to continue construing patent claims based on the broadest reasonable interpretation, even though the district courts review claim construction under an ordinary and customary meaning.
It has been generally assumed that the PTAB’s broadest reasonable interpretation would be at least as broad, if not broader, than the district courts’ interpretation.
However, since Cuozzo, the Federal Circuit seems to suggest that interpretation under “broadest reasonable interpretation” takes patent prosecution into consideration even though traditionally the “broadest reasonable interpretation” does not require such consideration. The Federal Circuit, in reviewing the PTAB decision in John D’ Agostino v. Mastercard International Inc., 2016 U.S. Appl. LEXIS 23025 (Fed. Cir., December 22, 2016), found the specification described several embodiments, but the court relied upon statements made by the patentee during prosecution and reexamination, ultimately allowing the claim to overcome patentability issues based on the cited prior art.
Therefore, although the two standards are far from identical, the PTAB should now be more inclined to consider statements made in prosecution under a broadest reasonable interpretation such that the Federal Circuit would likely agree with such use.