Law360
October 6, 2017

"Federal Circuit Rebuke of PTAB Interpretation May Aid Patentees"

Jim Day commented on the Federal Circuit's decision scolding the Patent Trial and Appeal Board (PTAB) for using an "unreasonably broad" reading of a patent.

In the article, Jim said the lines from the Federal Circuit's opinion about tying claim construction to the specification will be useful to litigants arguing that patent claims should be read narrowly. "Whoever it is who wants to say patent claims are narrow now has a really nice statement," he said. "This is a pretty good quote if you want to make that argument."

However, he added, the decision’s focus on the specification seems to be at odds with typical claim construction principles. "The specification is supposed to give an example of what the invention looks like, and the claims define how broad the patent is," Mr. Day said. "The reading in this decision sounds inconsistent with that to me. It sounds like the specification is going to define the scope of the claims."

Mr. Day said the decision appears to be an effort by the Federal Circuit to clarify the complex task of interpreting patent claims. "In claim construction, there’s a risk of an 'eye of the beholder’ situation, where whoever reads a patent has an idea of what it means," he said. "Here we see judges trying to bring some order to it."

Link to article (subscription required).