COURT REAFFIRMS THAT EXTRINSIC EVIDENCE SHOULD NOT BE USED TO CONSTRUE CLAIM WHEN IT IS INCONSISTENT WITH MORE RELIABLE INTRINSIC EVIDENCE

William Westerman | March 11, 2014

Tempo Lighting Inc. v. Tivoli, LLC.

 Decided February 10, 2014

 Before RADER, Chief Judge, MOORE, and WALLACH, Circuit Judges. Opinion by RADER.

 Summary

Tivoli owns USP 6,554,446.  The ‘446 patent relates to a reflective strip of material that illuminates the edge of stair steps in low light situations.  Claim 1, for example, recites:

1.   A lighting apparatus comprising:

a first extruded portion shaped to mount on the nose of a stair step; and

a second extruded portion coextruded with said first portion and mounted on top of the first portion so as to be above the nose of the stair step, said second portion comprising a material inert to light and selected to have a reflectance factor greater than or equal to light gray polyvinyl chloride.

Tivoli sued Tempo for infringement of the ‘446 patent in February of 2004. Tempo responded by filing an inter partes reexamination against the ‘446 patent.  The USPTO issued the first Office Action in March of 2005.  Soon after that, the district court stayed the infringement suit pending the result of the reexamination.  The district court case remained stayed for over 8 years while the reexamination continued grinding its way through the USPTO.

Tempo filed sixty different proposed rejections in the reexamination.  The examiner adopted only five of the rejections.  The examiner provided a dictionary definition of the term, “inert to light.”  In May of 2009 the examiner closed prosecution, retaining his rejection of the claims, and Tivoli appealed the examiner’s rejection of the claims to the Board. 

The Board held that:

 1.   The examiner’s definition of “inert to light” was wrong and used the one based on the prosecution history, in which the term “inert to light” was “non-photoluminescent and not activated to glow by absorbing ambient light.”

2.   The rejection of claims 1-3 and 6-13 were improper.  The Board stated that the references did not show the feature of “inert to light.”

3.   Tempo had waived alternative arguments because it did not file a cross-appeal raising such arguments.

 Tempo appealed to the CAFC.

 

Details

The CAFC overruled the Board in part: 

1.   The court sustained the Board’s construction of the term, “inert to light” as noted above. The court noted that the Board “did not err in reaching the meaning based on intrinsic evidence…”.  The claims were amended twice to clarify the meaning of the term.  The USPTO requested that Tivoli rewrite the claim language in more positive terms.

2.   The Board relied on factual findings but which were based on earlier incorrect claim construction.  That was the earlier claim construction by the examiner.  The Board did not cite the examiner’s fact findings based upon the proper construction of the term, “inert to light”.  That proper construction is very different from the examiner’s construction.  The examiner based his construction on a dictionary which is extrinsic evidence, and thus not a preferred way to construe claims.  In this case, it allowed the examiner’s claim construction to be to narrow.  On remand, the USPTO will have to take up the case again and prepare new findings of fact based on the proper construction of “inert to light”.

3.   On remand the Board will consider the alternate arguments that Tempo will put forward to support his position that is claims at issue should not be patentable.  The court stated that, “Tivoli’s conduct did not rise to the level of waiver…”.

 Holding

The construction of “inert to light” was affirmed, and the Board’s decision reversing the examiner’s decisions was vacated.  The Board’s conclusion that Tempo had waived arguments was vacated.  The court therefore remanded to the board.

Takeaway

If you are the patent owner, be careful of examiners doing claim construction in reexamination based upon extrinsic evidence.  If you are the accused infringer, then if the examiner uses extrinsic evidence to construe claims, it may be a way to attack the claim construction.

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