United States: Federal Circuit Again Reminds PTAB That BRI Must Be Reasonable

Last Updated: January 8 2018
Article by Ryan Schermerhorn

Last fall, the Federal Circuit reversed a PTAB decision that affirmed an Examiner's rejection of various claims in an ex parte reexamination because the Examiner's interpretation of the claims, which the PTAB upheld, was unreasonably broad. In re Smith International, Inc., Appeal No. 2016-2303 (Fed. Cir. Sept. 26, 2017). The court's decision is noteworthy because it reinforces the bounds of the broadest reasonable interpretation claim construction standard the Patent Office must apply when assessing patentability, bounds that do not encompass the broadest possible interpretation.

Smith International, Inc. ("Smith") owns U.S. Patent No. 6,732,817 ("the '817 Patent"), which issued with 73 claims and generally relates to an expandable downhole drilling tool, for oil and gas operations, that includes, in relevant part, a body, a mandrel, and a cam sleeve. Smith sued Baker Hughes Inc. ("Baker Hughes") and, in turn, Baker Hughes successfully requested that the Patent Office reexamine claims 28-37, 39-46, 49, and 50 of the '817 Patent. During the reexamination, Smith again sued Baker Hughes for infringement of the patent, albeit in a different federal district. In turn, Baker Hughes petitioned for inter partes review, which the PTAB denied for reasons of administrative economy implicated by the substantive overlap between the petitions and the pending reexamination.

During the reexamination, the Examiner rejected a subset of these claims (claims 28-36, 39, 40-43, and 50) as well as claims 79-81 and 93-99 that Smith sought to add to the patent. All of these claims, according to the Examiner, were anticipated by Eddison and/or obvious over Eddison in view of Wardley and Jewkes. The rejections rested on the Examiner's construction of the claim term "body," as a broad term that may include other components such as a "cam sleeve" and a "mandrel," which, according to the Examiner, was met by the combination of Eddison's "body," "mandrel," and "cam sleeve".

The PTAB affirmed all of the Examiner's rejections, finding the Examiner's construction of the term "body" to be reasonable. First, the PTAB determined that the term "body" is "a generic term ... that by itself provides no structural specificity." Slip op. at 10. Second, the PTAB noted that nothing in Smith's patent altered this general meaning of the term "body," as the specification did "not 'define the term body' or 'preclude the Examiner's interpretation.'" The PTAB also rejected Smith's argument that one of ordinary skill in the art would understand the "body" as an element that is distinct from components like the "mandrel" and the "cam sleeve," noting Smith's failure to demonstrate such an understanding in the prior art and the fact that the "mandrel" was not expressly recited in the claims. The PTAB concluded therefore that it was reasonable to construe the term "body" to mean "the overall portion or portions of the downhole tool that define the bore and may include one or more other elements." Slip op. at 11.

On appeal to the Federal Circuit, Smith argued that the Patent Office's construction of the term "body" was unreasonably broad. More particularly, Smith argued that the PTAB's construction was inconsistent with the specification, which consistently and clearly described the body as a component of the drilling tool that is distinct from other separately identified components like the "mandrel" and the "cam sleeve" that are also part of the drilling tool. Smith therefore contended that the proper construction of the term "body" was "an outer housing" distinct from other components of the tool, and cited various prior art references, including Eddison, in support of this contention.

The Federal Circuit agreed with Smith. In its decision, the court first reminded the PTAB that even under the broadest reasonable interpretation (BRI) standard, claims cannot be construed '"so broadly that its constructions are unreasonable"', i.e., cannot be construed in a manner that is '"divorced from the specification."' Slip op. at 12 (citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). Here, the Federal Circuit concluded that the PTAB's construction was divorced from the patent's specification, which clearly and consistently described the body as a component separate from other components such as the mandrel.

"Even when giving claim terms their broadest reasonable interpretation, the Board cannot construe the claims "so broadly that its constructions are unreasonable under general claim construction principles."

Next, the court rejected the Patent Office's argument that the patent's specification did not preclude the Examiner's broad construction. The court reminded the Patent Office that "[t]he correct inquiry ... is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner." Slip op. at 12-13. The Patent Office argument would, according to the court, effectively turn the BRI standard into a "broadest possible interpretation" standard. That is not the law and, accordingly, the Federal Circuit emphasized that the correct inquiry is whether the interpretation is "consistent with the specification." Slip op. at 13 (citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). And here, again, the court determined that the construction of the term "body" adopted by the Examiner and confirmed by the PTAB was inconsistent with the specification. Additionally, the court noted that Smith's proposed construction was also consistent with Eddison, which itself described its "body," "mandrel," and "cam sleeve" as separate components of the drilling tool.

The Federal Circuit thus concluded that the proper construction of the term "body" is a component that is distinct from other components, such as the mandrel and the cam sleeve, separately identified in the patent's specification. Properly construed, the term "body" did not read on Eddison's "body," "mandrel," and "cam sleeve." Accordingly, the Federal Circuit reversed the PTAB's decision that claims 28-36, 39, 40-43, 50, 79-81, and 93-99 were anticipated by Eddison or rendered obvious by Eddison, Wardley, and Jewkes.

This decision serves as yet another reminder to examiners, the PTAB, and patent practitioners that BRI means broadest reasonable interpretation in light of both the claims and the specification, and not the broadest possible interpretation.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions