The Board Misses the BRI with a Construction that was too Narrow

In Owens Corning v. Fast Felt Corp., [2016-2613] (October 11, 2017), the Federal Circuit reversed the PTAB decision that the challenged claims of U.S. Patent No. 8,137,757, which describes and claims methods for printing nail tabs or reinforcement strips on roofing or building cover material, were not obvious.

On appeal Owens Corning argued that the Board effectively treated
the “roofing or building cover material” in the claims as limited to material that either has been or would be coated or saturated with asphalt or asphalt mix, and that this limited construction was incorrect under the broadest reasonable interpretation standard.

The Federal Circuit noted that that the Board construed the claim term “roofing or building cover material” to mean “base substrate materials such as dry felt, fiberglass mat, and/or polyester mat, before coating or saturation with asphalt or asphalt mix, and asphalt coated or saturated substrates such as tar paper and saturated felt.” While the Board correctly noted that this construction “does not require an asphalt-coated substrate,” when evaluating Owens Corning’s arguments regarding
motivation to combine and reasonable expectation of success, the Board made clear its understanding of its construction, and hence of the claims, as requiring materials that would eventually be coated with asphalt even if
they had not already been coated before printing.

After reviewing the Board’s rationale, the Federal Circuit concluded that the Board simply did not address roofing or building cover materials that would never be coated in asphalt, and this was a mistake.  The Federal Circuit concluded that the correct broadest reasonable construction of “roofing or building cover material” would include materials that neither have been nor are to be coated or saturated with asphalt or asphalt mix.

The Federal Circuit found that it was not necessary or appropriate to remand the case, however.  On the evidence and arguments presented to the Board, there is only one possible evidence-supported finding: the Board’s rejection of Owens Corning’s challenge, when the correct construction is employed, is not supported by substantial evidence.  Moreover, Fastfelt did not argue for remand.  The Federal Circuit reviewed the record and concluded that the challenged claims were unpatentable for obviousness.

 

Broadest Reasonable Construction is Not One Not Precluded by the Specification, but is One Consistent with the Specification

In re: Smith International, Inc., [2016-2303] (September 26, 2017), the Federal Circuit reversed the PTAB’s affirmance of the Examiner’s rejections of claims in an ex parte reexamination of U.S. Patent 6,732,817 directed to a downhole drilling tool for oil and gas operations.

The Board affirmed the examiner’s interpretation of the term “body” as a broad term that may encompass other components such as “mandrel” and “cam sleeve,” reasoning that only the term “body” is recited in the
claims without further limiting features and that the specification neither defines the term “body” nor prohibits the examiner’s broad reading of it.  The Federal Circuit concluded that the Board’s construction of “body”
was unreasonably broad. 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.”

The Federal Circuit noted that some of the claims at issue recite a
broad term “body” without further elaboration on what the term “body” encompasses. However the Federal Circuit noted that the remainder of the specification does not use the term as a generic body. There is no dispute that the patent specification consistently describes and refers to the body as a component distinct from others, such as the mandrel, piston, and drive ring.

On this record, the Board concluded that the Examiner’s broad construction was not precluded.  However the Federal Circuit  found that 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 adopted by the Examiner.  Nor is it simply an interpretation that is not inconsistent
with the specification. 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.”

The Federal Circuit held that giving the term “body” such a strained breadth in the face of the otherwise different description in the specification was unreasonable.  With the correct construction, the Federal Circuit reversed the rejection of the claims.

Broadest Reasonable Interpretation Does Not Include Legally Incorrect Interpretation

In D’Agostino v. Mastercard International, Inc., [2016-1592, 2016-1593] (December 22, 2016), the Federal Circuit vacated the PTAB’s decision in two inter partes reviews that the challenged claims in U.S. Patent Nos. 7,840,486 and 8,036,988 were unpatentable for anticipation and obviousness, because the decisions rested on unreasonable claim constructions.

The Federal Circuit noted that Board applies the broadest reasonable interpretation standard in inter partes review, but said that this does not include giving claims a legally incorrect interpretation.  At issue was the interpretation of the

b) receiving a request from said account holder for a transaction code to make a purchase within a payment category that at least limits transactions to a single merchant, said single merchant limitation being included in said payment category prior to any particular merchant being identified as said single merchant;

The Federal Circuit found that it was critical that the “single merchant” must not be identified to the authorizing entity at that time of the request: “The single-merchant limitation thus requires, simply, that, when the transaction code is requested, the request
limits the number of authorized merchants to one but does not then identify the merchant, such identification occurring only later.”

The Federal Circuit the found that the Board either departed from or misapplied the  clear meaning when of the claim, whether as a matter of claim construction or as a matter of application to the prior art, when it concluded that the claim covers a situation in which the customer first seeks a transaction code for an identified “chain of stores” and, later, picks a specific store within that chain. The Federal Circuit found that this was contrary to the requirement that at the time the transaction code is requested, the request does not identify the merchant.  The only way the Board could be correct was if “single merchant” and “particular merchant” had different meanings, which under the circumstance was not correct.

Because the decisive aspect of the Board’s reasoning is contrary to the claim as reasonably construed, we need not and do not
discuss other statements made by the Board en route to
its conclusion.

 

BRI Does Not Apply if Patent Expires Any Time During Reexamination Proceeding

In In Re CSB-System International, Inc., [2015-1832] (August 9, 2016), the Federal Circuit held that the PTAB erred in applying a broadest reasonable interpretation claim construction, instead of a Phillips claim construction, to claims that expired during the course of the ex parte reexamination, but nonetheless affirmed the rejection of claims as obvious under the correct, narrower, standard.

The Federal Circuit said that during reexamination proceedings of unexpired patents, however, the Board uses the broadest reasonable interpretation
consistent with the specification standard, or BRI.  The rationale for permitting
this broader standard in reexaminations is that a patent owner before the Patent and Trademark Office with an unexpired patent may amend claims to narrow their scope, negating any unfairness that may otherwise result from adopting the BRI standard.  However, when an expired patent is subject to reexamination, the traditional Phillips construction standard attaches.

In the instant case, the patent expired after the Examiner issued a final rejection but before consideration of the appeal by the PTAB.  The PTAB applied BRI becaue the patent owner 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.

The Federal Circuit disagreed with the Board’s approach, stating that when a patent expires during a reexamination proceeding, the PTO should thereafter apply the Phillips standard for claim construction, even if this means that the Board applies a different standard than the examiner.

The Federal Circuit held that:

BRI is not a monolithic standard that the Board can use even after a patent expires. Rather, consistent with our prior precedent and customary practice, we reaffirm that once a patent expires, the PTO should apply the Phillips standard for claim construction.

It’s Not the Broadest Reasonable Interpretation, but the Broadest Reasonable Interpretation in Light of the Specification

In In re Man Machine Interface Tech. LLC, [2015-1562] (April 19, 2016), the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the PTAB’s affirmance of the rejection of claims of U.S. Patent No. 6,069,614 in ex parte reexamination.

The patent is directed to a remote control device for making selections on television or computer screens.  The examiner construed the claim term “adapted to be held by the human hand” in the patent broadly to include various “forms of grasp or grasping by a user’s hand,” such as the grasping of the mouse on a desk top.  The examiner similarly interpreted the claim term “thumb switch”  as “merely requir[ing] that a switch . . . be capable of being enabled/activated by a thumb but . . . not preclud[ing] another digit, i.e. index finger.”  Based upon these broad constructions, the reexamination examiner found the claims anticipated.  The PTAB affirmed emphasizing that appellant had not cited to a definition of ‘a body adapted to be held by the human hand’ or ‘thumb switch’ in the Specification that would preclude the Examiner’s broader reading.

The Federal circuit found that the intrinsic record fully determines the proper construction, so its review was de novo. Noting that in reexamination the Board must give the terms their broadest reasonable construction, this construction cannot be divorced from the specification and the record evidence.

The Federal Circuit said that the phrase “adapted to” generally means “made to,” “designed to,” or “configured to,” though it can also be used more broadly to mean “capable of” or “suitable for.”  The Federal Circuit found that “adapted to,” as used in the ’614 claims and specification, has the narrower meaning — that the claimed remote control device is made or designed to be held in the human hand and the thumb switch is made or designed for activation by a human thumb.

The Federal Circuit found support for this in the written description, including an express distinction between the claimed device and the deskbound devices in the applied prior art.  The Federal Circuit said: “The broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification.” Based upon the language of the specification, the Federal Circuit rejected the Board’s unreasonably broad construction and construe “adapted to be held by the human hand” to mean “designed or made to be held by the human hand,” which it said excluded the desk-bound mouse of the prior art.

Similarly the Federal Circuit rejected the Board’s overly broad construction of “thumb switch being adapted for activation by the human thumb,” noting that the construction ignores the term “thumb” in “thumb switch., or in light of the specification.  The Federal Circuit reminded that the proper BRI construction is not just the broadest construction, but rather the broadest reasonable construction in light of the specification.  A construction that is unreasonably broad and which does not reasonably reflect the plain language and disclosure will not pass muster.

The Federal Circuit said that the Board’s broad construction of “thumb switch being adapted for activation by a human thumb” as being merely capable of activation by a human thumb is unreasonable in view of the specification’s clear teaching that the patentee intended a narrower meaning.

Because the Board’s anticipation rejection was based on erroneous claim constructions and the rejection is not supported under the proper constructions, the finding of anticipate was reversed.