The Federal Circuit yesterday issued an opinion in In re: Smith Int'l, Inc., No. 2016-2303 (Fed. Cir. Sept. 26, 2017) reversing an affirmance by the Patent Trial and Appeal Board of the rejection of several claims of U.S. Patent No. 6,732,817 being challenged in ex parte reexamination. In so doing, the Court held the Board's construction of "body" in the '817 Patent claims to be unreasonable as inconsistent with the specification.
The '817 Patent concerns a downhole drilling tool for oil and gas operations. In affirming the examiner, the Board found it "perfectly reasonable" to interpret the "body" of the tool as encompassing other components because neither the claims nor the specification explicitly limit the scope of the term. Even though the specification describes the body as separate from other elements, the Board reasoned that it doesn't expressly define "body" or otherwise preclude the examiner's interpretation. But according to Smith, the '817 Patent consistently refers to and depicts the body as a component distinct from other components of the drilling tool – like the "mandrel" or "piston" located inside the drilling tool – and should be interpreted simply as an "outer housing."
The Federal Circuit agreed: "We conclude that the Board's construction of "body" was unreasonably broad." Writing for the panel, Judge Lourie agreed with Smith that the specification uniformly discloses the body as a component distinct from other components of the drill. Importantly, the Court rejected the Board's reasoning that the examiner's interpretation of "body" was reasonable because the specification does not explicitly proscribe the examiner construction, as follows:
The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term.... It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is "consistent with the specification." ... [T]he Board found that nothing in the specification would disallow the examiner's interpretation, rendering it "reasonable." However, following such logic, any description short of an express definition or disclaimer in the specification would result in an adoption of a broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise. That is not properly giving the claim term its broadest reasonable interpretation in light of the specification. Slip Op. at 13 (emphasis in original)
The Smith decision is both informative and interesting, in that it reminds practitioners that the standard is one of reasonableness, not mere possibility, based on what the specification informs and also suggests that the traditional "explicit disclaimer" or "words of manifest exclusion" tenet used when construing claims under Phillips does not apply to the broadest reasonable interpretation analysis.
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