Starting November 13, 2018, all IPR, PGR, and CBM proceedings will conduct their claim construction using the Phillips standard put forth by the Federal Circuit in 2005, turning away from the Broadest Reasonable Interpretation (BRI) standard it currently uses. This brings the PTAB in line with the Federal Courts and the ITC in examination standards.

Under BRI, claims are interpreted using the “broadest reasonable meaning of [a claim’s] words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.”[1] Under the Phillips standard, claims are given a narrower construction as “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.”[2]

Currently, there are about 150 petitions filed at the PTAB each month, with an institution rate of 40% over the last twelve months (statistics obtained using Insights at PostGrant Portal). It bears watching whether there will be a spike in filings at the PTAB this final month for petitioners who would prefer the BRI standard or a drop-off for those waiting for the new Phillips standard next month.

As Maier & Maier partner, Steve Kunin, explains here, the most significant impacts will not be felt in PTAB proceedings, but in District Court. “Practically speaking in most cases BRI and Phillips claim construction in PTAB AIA proceedings are not materially different; I see the real impact will be in district court proceedings when the patent owner is arguing for a narrow claim construction and can now point to the AIA trials as supporting the position.” Some petitioners may strategically wait for the new standard, as the PTAB construction would be given more deference with the newly aligned standards, and a narrower construction would prove useful in supporting a non-infringement argument.

[1] In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

[2] Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).

Apple Inc. Patent Revived After Federal Circuit Reverses PTAB Decision

On September 19, 2016, the Federal Circuit issued an opinion in In Re: Lemay, in which it reversed the Patent Trial and Appeal Board’s (“PTAB”) denial of Apple Inc.’s patent application directed to a method of streaming online videos to a portable device.  The Federal Circuit’s opinion addresses the topic of claim construction.



The patent application at issue, filed back in December 2007, recites a method of interacting with a graphical user interface primarily through finger contact and gestures on a touch-sensitive display.[1]  A USPTO examiner rejected the application as obvious over various combinations of prior art, mainly US. Patent No. 7739271 (“Cook”) and U.S. Patent Publication No. 2007/0024646 (“Saarinen”). The PTAB affirmed the rejection on the majority of claims, agreeing with the Examiner that one skilled in the art would have recognized that the combination of Cook and Saarinen teaches or suggests the disputed limitations of the invention. Specifically, the PTAB’s final written decision found all but two of the disputed claims to be unpatentable in view of the cited prior art references.  Apple subsequently filed an appeal, contesting, among other issues, the PTAB’s rejection of claims as obvious and arguing the USPTO’s “sparsely reasoned” decisions ignored important evidence.

In a split decision (2-1), the three-judge Federal Circuit panel found there was not enough evidence to support the PTAB’s determination that Cook and Saarinen teach the subject elements of the disputed claims. The opinion acknowledged that the ultimate determination of obviousness is a question of law, but noted that the determination is based on underlying factual findings.[2] The Federal Circuit reviews the PTAB’s factual determinations for substantial evidence and its legal determinations de novo.[3] The ruling focused its analysis on the first claim of the patent application, as the parties agreed it would be representative of the rest. As noted in the opinion, a claim is considered representative when the arguments presented in support of that claim apply to other claims grouped with such so that all grouped claims rise and fall based on the representative claim.[4]


No Substantial Evidence Supports the PTAB’s Finding that Cook and Saarinen Teach Each and Every Limitation of the Claimed Invention

The first issue presented was whether the Cook reference taught the element recited in the final clause of claim 1, which requires “that ‘in response to detecting (1) a finger gesture on a respective icon in the plurality of icons, displaying, on the touch screen display of the portable electronic device, (2) a corresponding list of information about online video items.” Simply put, the invention claims the use of touch screen icons like “Most Viewed” and “Featured” to bring up corresponding lists of YouTube and other website videos. According to Lemay, the tapping of the user’s finger, for example on the “Most Viewed” icon, and the resulting display of video titles and associated information illustrate the two elements in the final clause of claim 1, respectively.

The Federal Circuit determined that the USPTO erred in its finding that Cook teaches these elements (in combination with Saarinen, which teaches a touch screen and finger gestures). The Court explained that the USPTO cited two distinct “list[s] of information” corresponding to an icon when the claim had earlier provided the antecedent basis for “the plurality of icons” and their corresponding lists of information. In particular, the Court noted “if the ‘list of information’ corresponding to an icon is represented by album titles, artist names, and release dates generated as the results of the search query, the same list cannot also be represented elsewhere as a list of track titles.”

The second issue presented was whether the Cook reference taught “displaying . . . a first list of information about online video items in a plurality of lists of information about online video items,” as is recited in the first clause of claim 1.  Appellants argued that the use of the word “items” indicates that “the first list of information must be about multiple online video items.” The USPTO, on the other hand, argued that Lemay’s argument “misses the mark” because the “sample(s)” illustrated in Cook Figure 3B are the “items” referred to in claim 1, and the “list of information” corresponding to these items is the list of search results illustrated in Figure 3B.

The Federal Circuit sided with the Appellants, finding the USPTO’s reasoning to be “internally inconsistent.” Specifically, the majority explained that “[i]f each of the three sets of title, artist, and price information constitutes one of the ‘lists of information,’ it cannot also be correct that the search results as a whole … constitute one of the lists.” The majority therefore disagreed with the PTAB’s conclusion that Cook discloses “a first list of information about online video items…” The majority additionally noted that “if each of the three sets of title, artist, and price information constitutes one of the lists of information, then each such list corresponds only to a single item,” rather than multiple “online video items.”

Lastly, the majority determined that there is no substantial evidence to support the PTAB’s obviousness determination for three dependent claims, as they depend on nonobvious independent claims.



In her dissent, U.S. Circuit Judge Kimberly A. Moore argues that there was substantial evidence to support the PTAB’s finding that Cook and Saarinen disclose the disputed limitations of claim 1. Unlike the majority, Judge Moore contends that the claim’s “plurality of lists of information about online video items” is a different element from the same claim’s “a corresponding list of information about online video items.” In particular, she argues that there is no antecedent basis to support limiting “a corresponding list” to one of the “plurality of lists.” She also states that the limitations themselves use different words to describe the two different lists of information. Finally, she explains that during prosecution, the USPTO gives terms their broadest reasonable construction, which, in her view, further suggests a differentiation between the terms “a corresponding list” and “the plurality of lists.”



Although the deposition is nonprecedential, the Federal Circuit’s reversal of the PTAB’s ruling takes an unusual turn in favor of the patent applicant. Typically, the standard of appellate review makes it difficult to challenge the PTAB’s factual findings as to what is taught by the prior art. These findings are upheld if supported by substantial evidence, “something less than the weight of the evidence but more than a mere scintilla of evidence.” However, in this case, the Federal Circuit sided with Apple Inc., finding that no substantial evidence supported the PTAB’s factual findings.


[1] See U.S. Patent Publication No. 2008/0320391

[2] See In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). The underlying factual findings include (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) the presence of secondary considerations of nonobviousness, such as “commercial success, long felt but unsolved needs, [and] failure of others.” Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966).

[3] Substantial evidence is “‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” In re Applied Materials, Inc., 692 F.3d 1289, 1294 (Fed. Cir. 2012) (quoting Consol. Edison Co. v. N.L.R.B., 305 U.S. 197, 229 (1938)).

[4] See 37 C.F.R. § 41.37(c)(1)(iv) (2012) (“For each ground of rejection applying to two or more claims, the claims may be argued . . . as a group (all claims subject to the ground of rejection rise and fall together).