Tuesday, August 09, 2016

CAFC in CSB-System: BRI is not a monolithic standard

The issue was "what standard" of review is applied in re-exams, when the patent has expired:

The ’953 patent expired on May 20, 2014, after the
examiner issued a final rejection but before consideration
by the Board. The Board’s decision acknowledged that
the patent had expired, but nevertheless applied the BRI
standard. The Board contended that employing BRI was
proper because CSB had the opportunity to amend its
patent claims while they were pending before the examiner
in the reexamination, as the patent had yet to expire.
We disagree with the Board’s approach. When a patent
expires during a reexamination proceeding, the PTO
should thereafter apply the Phillips standard for claim
construction. We hold as much regardless of whether this
means that the Board applies a different standard than
the examiner. Our decision in In re Rambus, Inc. (Rambus
II), 753 F.3d 1253 (Fed. Cir. 2014) is instructive. In
Rambus II, the patent undergoing reexamination expired
after the examiner issued a right of appeal notice. See id.
at 1255–56; Rambus II Joint Appendix at 64, 130. While
the Board’s decision did not indicate whether it reviewed
the examiner’s claim construction under the BRI standard
or the Phillips standard,see Rambus II Joint Appendix at
1–54, on appeal we indicated that we must use the Phillips
standard because the patent had expired during the
appeal before the Board. Rambus II, 753 F.3d at 1256; see
also Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x
864, 868–69 (Fed. Cir. 2014) (non-precedential) (applying
Phillips standard when patent expired after the Board’s
reexamination decision pending appeal to the Federal

The PTO argues that because the Board operates as a
tribunal of review for the examiner’s work, the Board
must scrutinize claims consistent with the standard used
by the examiner in the first instance, even after a patent
has expired. But, if anything, the Phillips standard
would result in a more narrow claim scope and, consequently,
we see little chance of the Board issuing new
grounds of rejection based on a narrower claim scope. See
Facebook, 582 F. App’x at 869 (explaining that construction
of term under the BRI standard “cannot be narrower”
than that under the Phillips standard). In many cases,
the claim construction will be the same under the Phillips
and BRI standards. See, e.g., Proxyconn, 789 F.3d at 1302
n.1 (noting that the claim term under review had the
same construction under the BRI and Phillips standards);
Facebook, 582 F. App’x at 869 (“The broadest reasonable
interpretation of a claim term may be the same as or
broader than the construction of a term under the Phillips

We are also not persuaded by the PTO’s argument
that BRI should apply here because the patent owner
could have amended its claims while before the examiner.
The policy underlying our embrace of BRI in limited
circumstances does not extend to cases where a patent
expires during a reexamination because the patent owner’s
ability to amend is substantially diminished when
this occurs regardless of the stage of the reexamination.
Under the PTO’s regulations, a patentee may not amend a
claim that expires during prosecution. 37 C.F.R.
§ 1.530(j) (“No amendment may be proposed for entry in
an expired patent.”). Moreover, patents that expire
during an appeal to the Board, as in this case, will not be
issued with amended claims even if the patent owner
amended them while before the examiner. See Institut
Pasteur & Universite Pierre Et Marie Curie v. Focarino,
738 F.3d 1337, 1343 (Fed. Cir. 2013) (holding that, under
§ 1.530(j), (k), “the PTO may not issue the amended claim
now that the patent has expired” after the Board issued a
reexamination decision). Because it is not always clear
how much time a Board appeal will take and at what
point a patent owner can reopen prosecution and amend
its claims, and we do not think an inquiry into whether or
not a patent owner could have amended its claims, or
speculation as to whether the patent owner could in the
future have an opportunity to amend its claims, should
resolve the question.

In sum, we hold that BRI is not a monolithic standard
that the Board can use even after a patent expires.
Rather, consistent with our prior precedent and customary
practice, we reaffirm that once a patent expires, the
PTO should apply the Phillips standard for claim construction.


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