When examining patent applications, the USPTO generally applies the broadest reasonable interpretation to claim terms, including in post grant proceedings where the patent term has not yet expired. While this standard of review has been taken up by the Supreme Court in (In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed. Cir. 2015), cert. granted), the Patent Trial and Appeal Board (PTAB) at the USPTO (and the Federal Circuit reviewing USPTO decisions) continues to apply the this standard. In contrast, the "correct" claim construction is used by District Courts (and the Federal Circuit reviewing District Court decisions), and that standard is governed by Pillips v. AWH Corp., 415 F.3d 1303(Fed. Cir. 2005) (en banc). 

While the broadest reasonable interpretation standard is meant to ensure that the USPTO examines applications to the fullest extent of claim scope possible, Examiners often use the standard to support dubious rejections. A key limitation of the standard is that while enabling a broad interpretation, that interpretation still must be reasonable.

A pair of recent Federal Circuit decisions (PPC Broadband1 and PPC Broadband2), written by Judge Moore, provides some examples and guidance as to what are reasonable, and what are unreasonable, interpretations.

In PPC Broadband2, the Federal Circuit reversed the PTAB's claim construction of the term “reside around" as unreasonably broad. The PTAB had looked to the ordinary meaning of the terms separately and concluded that the broadest reasonable construction was positioning “in the immediate vicinity of; near.” The court first looked to the fact that there were multiple dictionary definitions for the term "around" - some broader than others. Next, the court reasoned that "[t]he fact that “around” has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of this specification."  In this regard, the court reasoned that all of the claims where in the context of coaxial cable technology, and in this context focused on situations where the components all "partially or wholly encircle the inner electrical conductor." Next, the court analyzed all of the uses of "around" in the specification and claims, and noted that they were consistent with the notion of encircling, not simply being near other components. Likewise, the specification did use terms such as "near" when intending to describe relationships as such.  Finally, the court considered the idea that a more narrow construction might exclude some embodiments. While true, the court explained that "[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." Interestingly, the court noted that even if the Supreme Court reverses in Couzzo, the decision in this case would not be affected since applying the Phillip's standard, the "right" construction would also not be the one set forth by the PTAB.

In PPC Broadband1, the court affirmed the PTAB's claim constructions, but noted that under Phillips, the construction was not the "correct" one. An example issue was with regard to the term "continuous," and whether that covered one or both of continuity in time and space. Here, the court considered the ordinary meaning of the term and found that the PTAB's interpretation of continuity in either time or space was not unreasonable. The court explained that while the ordinary meaning of “continuity” and “continuous” often refers to something that is uninterrupted in time, these terms can also refer to something that is uninterrupted in space. Here, the specification used the term to refer to both concepts. However, even still, the court also explained that the fundamental problem being addressed by the invention was that of intermittent connection, and thus the "correct" claim construction of the term would be to require continuity in time. Thus, under the Phillips standard, it seems the court's decision on this term would have flipped.

So, if an Examiner is attempting to assert a construction that is unreasonable (e.g., by selecting a particular definition from among several), an applicant should be able to show that another definition is more appropriate by pointing out not only the context of the term, but also the fact that the specification always uses that term consistent with the more appropriate definition, and never uses it consistent with the asserted (unreasonable) definition. Of course, this also implicates drafting considerations and whether the specification should be drafted with the idea of having a single term always have only a single definition, or should be drafted to provide alternatives (in which case amendments, if possible, would be the more appropriate option rather than arguing the interpretation is unreasonable).