CUOZZO SPEED TECHNOLOGIES, LLC, :

Petitioner, : No. 15-446 5 v. :

MICHELLE K. LEE, UNDER SECRETARY :

OF COMMERCE FOR INTELLECTUAL :

PROPERTY AND DIRECTOR, PATENT AND :

TRADEMARK OFFICE,

MR. BEENEY: comment

"Consistent with history, Congress left to

the judiciary to determine construction standards, and

therefore, in the American Invents Act, there is no

explicit statutory language directing the Patent and

Trademark Office to use any particular standard of claim

construction."

Re: minutes of hearing BRI vs. Ordinary meaning

JUSTICE KENNEDY: Well, if -- if the -- if

the patent is invalid under its broadest, reasonable

interpretation, doesn't -- doesn't that mean the PTO

should never have issued the patent in the first place,

and doesn't that give very significant meaning and

structure to this process?

MR. BEENEY: Not necessarily, Justice

Kennedy. And -- and the reason is this: The purpose of

the broadest reasonable interpretation expedient, as the

government agrees it is, it is not a claim-construction

standard as the Federal circuit said in Skvorecz.

What it does is try to test for ambiguity in

the claim language, not patentability. Patentability is

the standard that Congress set in inter partes review.

But what the broadest reasonable interpretation does is

try to test for ambiguity in the patent language so it

can be amended. So the fact that a patented invention

or an application may not pass the broadest reasonable

expedient does not mean that the inventor has not

claimed a patentable invention. It simply means that

the language is ambiguous, and the language needs to be

refined. And that is a wholly different exercise.

JUSTICE KENNEDY: Well, I -- I guess I

was -- was thinking of the mind-set that -- that the

process, the structure, that the PTO uses in the first

place. It looks at a claim. If -- if I were the

examiner to determine whether or not I should grant the

patent, I'd say, I'm going to give this the broadest

interpretation to make sure I'm right. It seems to

me -- or am I wrong, that that's not what they do?

MR. BEENEY: They do, but not to determine

whether the claims are patentable. They do to determine

whether there's ambiguity in the language.

And, Your Honor, you can go back to a whole

line of district court cases from -- all the way from

Carr in, I think, 1924 in -- in the D.C. circuit to the

2016 decision in PCC Broadband, and all the cases in

between, Skvorecz and -- and In re Hyatt and all the

other ones. The purpose of the

broadest-reasonable-interpretation expedient -- and it's

called an "expedient" for a reason -- is to determine

whether claim language has ambiguity in it.

If it does, then the patent owner can amend

and -- and does so as of right in examinational context,

not in the IPR context, the patent owner can amend to

clarify that her claims really don't mean what they may

broadly be construed to mean.

JUSTICE BREYER: But the question that

Justice Kennedy asked, and I think it's an important

one, to me, anyway, was, if you -- forget this

proceeding. If, in fact, in the broadest possible, or

whatever, reasonable interpretation and you were in

front of the Patent Office, and that's what they would

look at, and if it was too broad because that broad, you

know, it has flaws in it of whatever kind, the patent

doesn't issue. Is that right or not right?

MR. BEENEY: It's not a question --

JUSTICE BREYER: It's either right or wrong.

You can tell me I'm right, or you can tell me I'm wrong.

MR. BEENEY: There isn't an iterative

process with the right to amend --

JUSTICE BREYER: I know that.

MR. BEENEY: So --

JUSTICE BREYER: I know that. I'm saying:

If at the end of the day, on the broadest reasonable

interpretation, it is not patentable, there is no patent

issued.

MR. BEENEY: That's correct.

JUSTICE BREYER: Okay. Now --

MR. BEENEY: That is correct.

JUSTICE BREYER: -- if that's so, you could

look at this new law as -- as -- as you were looking at

it, as trying to build a little court proceeding. If I

thought it was just doing that, I would say you were

right.

But there is another way to look at it. And

the other way to look at it -- and that's what I would

like your comment about -- is that there are these

things, for better words, let's call them patent trolls,

and that the -- the Patent Office has been issuing

billions of patents that shouldn't have been issued -- I

overstate -- but only some. And what happens is some

person in business gets this piece of paper and -- and

looks at it and says, oh, my God, I can't go ahead with

my invention.

And so what we're trying to do with this

process is to tell the office, you've been doing too

much too fast. Go back and let people who are hurt by

this come in and get rid of those patents that shouldn't

have been issued. Now, we will give you, again, once

the same chance we gave you before, and that is you can

amend it once if you convince the judge you should have

done it before. But if, on the broadest possible

interpretation, you know, reasonable interpretation, it

shouldn't have been issued, we're canceling it. And --

and that is for the benefit of those people who were

suffering from too many patents that shouldn't have been

issued in the first place. I don't know.

If it's that second purpose, then I would

think, well, maybe this is right, what they're doing.

And if it's ambiguous between those two purposes, I

would begin to think, well, maybe they should have the

power themselves under Chevron, Meade, or whatever, to

decide which to do.

Now, that's -- that's the argument, I think,

that's in my mind registering the other way. So what do

you say?

MR. BEENEY: Justice Breyer, if I agreed --

and respectfully, I'd like to explain why I disagree.

JUSTICE BREYER: Uh-huh.

MR. BEENEY: But -- but even if I did agree,

I -- I would say that Congress, in fact, established

exactly what Your Honor described. But it established a

system in which we are adjudicating property rights.

And it makes no more sense to adjudicate those property

rights in a court-like setting by pretending that those

rights are not what, in fact, was granted, what the

patentee claims, or what the patentee could assert in

district court infringement litigation than it does

to -- when you're in -- trying to determine whether

someone's property encroaches on another, which -- which

I would submit is really an apt analogy for the

obviousness-anticipation tests. We look at what the

boundaries -- the metes and bounds of that property

actually is.

So Congress, assuming that it did what Your

Honor suggested, established a system to do that, but it

established a system to adjudicate in a court-like

setting the actual patent rights that a patentee

obtains, not ones that someone suggests might be

broader. That is to determine ambiguity in claim

language, not to adjudicate rights.

JUSTICE SOTOMAYOR: I'm sorry. If language

is ambiguous, it can't have that plain meaning, can it?

MR. BEENEY: I'm sorry?

JUSTICE SOTOMAYOR: How would you have a

plain meaning that a district court would apply if

language is ambiguous? How could it say that you have a

valid property right in something that's ambiguous?

MR. BEENEY: The test of the ordinary

meaning, as enunciated by Philips and its progeny, will

first look at the claim language. If there's ambiguity

in the claim language, then what is the meaning of that

patent will be determined in light of the specification,

the prosecution history, and other intrinsic evidence.

In the rare case where there still may be

ambiguity, then the Court may consider extrinsic

evidence, dictionaries, other writings by the patentee,

what somebody of ordinary skill in the art might

determine a particular claim limitation to mean.

So there are a number of tools in the

ordinary-meaning-construction standard that should be

used here to --

JUSTICE SOTOMAYOR: Aren't those tools used

in determining the broadest -- the broadest reasonable

reading, meaning how can the PTO decide what a broad

reasonable reading is unless it looks at all of those

factors and decides that the specifications and all the

other things don't cure, continue to provide ambiguity

in the patent?

MR. BEENEY: It -- it does not. The

broadest reasonable interpretation is considerably

different than the ordinary meaning of construction

standard, and the fact that the Patent and Trademark

Office has admitted as much. In the manual for patent

examination procedures, the Patent and Trademark Office

tells its patent examiners, we, quote, "do not interpret

claims in the same manners as the courts."

Just recently, a very important tool that

courts look at in the ordinary-meaning context, the

prosecution history, in the Federal Register the Patent

and Trademark Office said that the only time it looks at

prosecution history is when it is actually raised by the

parties, relied on by the parties, and explained by the

parties.

There are very different sub tools, if you

will, within broadest reasonable interpretation and

ordinary meaning, and that's because they intend to

accomplish different purposes. One adjudicates

patentability, which is what Congress intended in IPR.

The other identifies ambiguity in claim language.

In fact --

CHIEF JUSTICE ROBERTS: Why --

MR. BEENEY: -- if one looks at -- if one

looks at the manual in Section 2111, the PTO tells its

examiners that one of the reasons we use the broadest

reasonable interpretation is because, unlike the courts,

we don't have before us a fully-developed prosecution

history. Well, when you're in inter partes review, you

do have a fully-developed prosecution history, and

that's what we should be looking at.

================================

According to Mr Beeney, there is a difference between BRI and ordinary meaning where each is used for different reasons.

Of course, in reading e.Digitals IPR circumstance there is verbiage by the PTAB, to the effect, that they(PTAB) are following standards set by Congress implicitly in the AIA legislation....lol.

The system is a scam and always will be, I guess. There is nothing about it for the people at all.

FWIW

doni