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The “broadest reasonable interpretation” actually has to be reasonable April 14, 2016

Posted by Brian Schar in General.
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PPC Broadband v. Corning Optical is one of the more helpful cases for patentees and applicants that has been decided for a few months.

If you’ve been at this crazy patent prosecution business for a while like I have, you remember the dictionary shopping in the wake of Phillips v. AWH.  This wasn’t just literal dictionary shopping, even though I went on eBay and bought a number of used dictionaries along with every other patent prosecutor.  Such dictionary shopping in practice meant poring through each of those dictionaries and cherry picking the definition that fit the argument you wanted to make against a particular Office Action.  That wasn’t ideal from either a practitioner or examiner standpoint, though, and the pure reliance on dictionaries was softened in later case law.

However, recently the PTAB seems to have caught the dictionary mania of 10 years ago, and that was a key issue in PPC Broadband.  The PTAB construed the term “around” consistent with the fourth of at least four definitions of “around” in the American Heritage College Dictionary: “in the immediate vicinity of; near.”  That is, the PTAB cherry-picked the definition of “around” that suited its purpose.  As Judge Moore pointed out, “[t]he Board seems to have arrived at its construction by referencing the dictionaries cited by the parties and simply selecting the broadest definition therein.”

However, the Federal Circuit emphasized that the PTAB has to give patent claims their “broadest reasonable interpretation consistent with the specification,” not the broadest possible construction.  “The fact that ‘around’ has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of th[e] specification.”

PPC Broadband’s proposed construction of “reside around” was “encircle or surround,” and this was the second of at least four definitions of “around” in the American Heritage College Dictionary.  In the patent at issue, the components of the claimed coaxial connectors as described in the specification “partially or wholly encircle the inner electrical conductor.”  The broadest reasonable interpretation in light of the specification thus is “encircle or surround,” not just being “in the immediate vicinity of, near.”  As Judge Moore states, “[g]iven the context of this technology, it seems odd to construe the term ‘reside around’ without recognizing the context of its use in terms of the coaxial cable at issue.”  If it wasn’t clear enough before that even after Phillips a bare dictionary definition won’t cut it for claim “interpretation,” it is now.  The PTAB is overworked and overloaded, but it can’t shortcut its way out of hard cases by picking up a few dictionaries and selecting a definition based solely on the criteria that the definition invalidates the patent.

The Federal Circuit also expressly declined Corning’s invitation to hold that the “broadest reasonable interpretation is the interpretation which includes as many of the disclosed embodiments as possible.”  To the contrary: “[a]bove all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.  The fact that one construction may cover more embodiments than another does not categorically render that construction reasonable.”

Current patent examination is riddled through with bare, unsupported assertions by Examiners that a particular broad interpretation of a claim term is just “broadest reasonable interpretation.”  PPC Broadband provides applicants with a powerful weapon to combat those vague and poorly-thought-out rejections.  Where the Examiner’s interpretation is nonexistent, or vague, or not consistent with the specification, the first and more powerful argument is that the Examiner has failed to interpret that term i a way that is reasonable in light of the specification.

 

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