Cuozzo and the End of Broadest Reasonable Interpretation at the PTAB

When the AIA trial rules took effect in 2012, the USPTO decided that the Board would give claims in inter partes review their broadest reasonable interpretation (BRI), the same standard examiners use. That choice shaped the first six years of IPR practice and produced a Supreme Court decision, Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. 261 (2016). It also produced a long debate about whether BRI made sense in a trial setting. Today the question is largely historical, because the Office changed the standard by rule in 2018.

Why examiners use BRI

During examination, an applicant can freely amend claims. The Office reads claims as broadly as they reasonably allow, so that ambiguities are exposed and resolved by amendment before a patent issues. The rationale depends on the ability to amend: an applicant who faces a broad reading can narrow the claim.

The 2012 IPR rules carried this standard over, pointing out that patent owners in IPR may also move to amend under 35 U.S.C. § 316(d).

The ability-to-amend debate

Critics argued that the analogy did not hold. In examination, amendment is routine and iterative. In IPR, the patent owner gets one motion to amend, limited to a reasonable number of substitute claims, filed on a tight schedule, and subject to the Board’s approval. In the early years, motions to amend were rarely granted. If amendment was more theoretical than real, critics said, the main justification for BRI was missing, and patent owners were left defending claims under a reading broader than any court would adopt.

Supporters responded that the opportunity to amend existed by statute, that BRI had a long history in Office proceedings such as reexamination, and that differences between agency and court results were an expected feature of a system with different burdens of proof. The procedure for amending is covered in amending patent claims during inter partes review.

In re Cuozzo at the Federal Circuit

The dispute reached the courts through the first IPR ever filed, Garmin International, Inc. v. Cuozzo Speed Technologies, LLC. After the Board found claims unpatentable, Cuozzo appealed and argued, among other things, that BRI was the wrong standard and that the institution decision was flawed. In In re Cuozzo Speed Technologies, LLC (Fed. Cir. 2015), a divided panel upheld BRI, and the court declined to rehear the case en banc over dissents.

The Supreme Court’s decision

The Supreme Court affirmed in 2016. On claim construction, it reasoned that Congress gave the USPTO authority to issue regulations governing IPR proceedings (35 U.S.C. § 316(a)(4)), the statute did not specify a claim construction standard, and BRI was a reasonable choice. The Court acknowledged the concerns about amendment but found that the opportunity to amend, even if limited in practice, was a real feature of the proceeding. It also recognized that the Office and the courts might reach different results, and viewed that as inherent in a system with different standards of proof.

On reviewability, the Court held that 35 U.S.C. § 314(d) generally bars judicial review of the decision to institute an IPR, at least when the challenge is closely tied to the institution statutes. That holding remains important; see the different threshold standards.

The 2018 rule: from BRI to Phillips

Cuozzo held only that BRI was permissible, not that it was required. In 2018 the USPTO used its rulemaking authority to change course. For IPR, PGR and CBM petitions filed on or after November 13, 2018, the Board construes claims using the same standard as a federal court, following Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc). The rule also provides that prior claim constructions from civil actions or the ITC, if timely made of record, will be considered (37 C.F.R. § 42.100(b)).

The Office’s stated reasons centered on consistency and predictability: the same patent is often litigated in court and challenged at the Board, and a single standard reduces the risk of conflicting readings. The rule is not retroactive, so decisions on earlier petitions still reflect BRI. The current practice is discussed in claim construction during inter partes review, and the rule’s place among other changes is covered in how the PTAB trial rules have changed.

Where the debate stands now

The ability-to-amend argument no longer decides the claim construction standard in AIA trials. It survives in two ways. First, it remains the accepted rationale for BRI in examination, reissue and reexamination, where amendment is freely available. Second, the concerns it raised about the practicality of amendment in IPR helped prompt later changes to motion-to-amend procedure and burdens, which continue to evolve.

Key takeaways

• BRI in examination rests on the applicant’s ability to amend; critics argued that rationale was weak in IPR.
• Cuozzo (2016) upheld BRI as a reasonable rule and held institution decisions largely unreviewable.
• For petitions filed on or after November 13, 2018, the Board applies the Phillips standard by rule.
• Older IPR decisions should be read with the BRI standard in mind.