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April 30, 2017

Comments

Re: "the case was remanded for the Board to reconsider these claims in light of the proper interpretation of rubberbanding."
This leads to a basic question: how does the Board handle remands of ex parte reexaminations [where the fact-finding is done ex parte by examiners], as compared to remands of IPRs [which are decided after inter party trials by Board APJs] ?

THE CONUNDRUM - DUALITY OF PATENT LAW
During the patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) expressly recognized, "the USPTO employs the “broadest reasonable interpretation” standard."

The United States Patent and Trademark Office (USPTO) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004). An examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. “During the patent examination, the pending claims must be interpreted as broadly as their terms reasonably allow.”); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). Thus, the claim has to be interpreted broadly so that it can be rejected over the prior art.

Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record. The USPTO does not interpret claims in the same manner as the courts. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1321-22 (Fed. Cir. 1989).

Is the Reexamination involving the Court is part of the prosecution process where the claim has to interpreted broadly, or is it an infringement proceeding where the claim has to be interpreted narrowly by the Court?

Would Apple have been better off claiming "at least two" rather than "two or more"?

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