The PTO must apply the Phillips standard for claim construction whenever a patent expires, even in the middle of proceedings that had previously used the broadest reasonable interpretation standard. Here, for example, the Board’s continued use of the broadest reasonable interpretation standard after the patent expired was found to be improper even though the patent expired between when the examiner issued a final rejection and when the Board took up the appeal. “When a patent expires during a reexamination proceeding, the PTO should thereafter apply the Phillips standard for claim construction … regardless of whether this means that the Board applies a different standard than the examiner.” This would be a good case to consult and cite in response to a broadest reasonable interpretation standard being applied by the PTO after a patent expires.
Background / Facts: The patent on appeal here from reexamination proceedings at the PTO expired after the examiner issued a final rejection but before consideration by the Board. The Board’s decision acknowledged that the patent had expired, but nevertheless applied the broadest reasonable interpretation (BRI) standard of claim construction.
Issue(s): Whether the Board’s use of the BRI standard was proper when the patentee had the opportunity to amend its patent claims while they were pending before the examiner in the reexamination, as the patent had yet to expire.
Holding(s): No. “When a patent expires during a reexamination proceeding, the PTO should thereafter apply the Phillips standard for claim construction. We hold as much regardless of whether this means that the Board applies a different standard than the examiner.” Among other reasons, the court noted that “patents that expire during an appeal to the Board, as in this case, will not be issued with amended claims even if the patent owner amended them while before the examiner.”