Newly Adopted Claim Construction Overcomes Anticipation & Obviousness Rejections
| May 2, 2018
Wonderland NurseryGoods Co., Ltd. v. Baby Trend, Inc., Denny Tsai, Betty Tsai
April 19, 2018
Before Moore, Prost & Newman. Opinion by Moore.
Summary:
The CAFC reversed the Board’s findings of anticipation and obviousness due to an erroneous claim construction. The newly adopted claim construction by the CAFC is consistent with the specification and prosecution history. Further, the CAFC held that the references of record did not anticipate nor render obvious the claims in light of the newly adopted claim construction.
要旨:
米国連邦巡回控訴裁判所(cafc)は、米国特許庁審判部のクレーム解釈が誤りであることを認め、誤ったクレーム解釈に基づく新規性ならびに自明性の判断を覆した。cafcが示したクレーム解釈は、当該米国特許の明細書ならびにプロセキューションヒストリに鑑みたものである。再発行特許(リイシュー)の手続き内で行なわれた補正が、権利範囲を拡張するためのものであったのか、あるいは、引例を回避するためのものであったのかが争点となった。
Details:
U.S. Reissued Patent43,919 (hereinafter ‘919) is directed towards “an easy to assemble baby crib in which a fabric member is positioned on a bed frame structure.” Id. at 2. The terms at issue are “a fabric member” and “an enclosure member”.
In two inter partes review (IPR) proceedings, the Board determined that “a fabric member” means “one or more pieces of fabric” and “an enclosure member” means “one or more members.” Id. at 2. In light of this construction, the Board held that the claims of the ‘919 Patent were anticipated U.S. Patent No. 6,004,182 (“Pasin”) and Australian Patent No. 715,883 (“Bidwell”) and would have been rendered obvious by Pasin in view of U.S. Patent No. 7,063,096 (“Stoeckler”), Bidwell in view of Stoeckler; U.S. Patent No. 3,924,280 (“Vaiano”) in view of Pasin and the combination of Vaiano, Pasin and Stoeckler. It is noted that the Board “stated that Vaiano taught ‘a single, continuous member’.” Id. at 3. Wonderland appealed.
“In IPR proceedings, the Board gives claims their broadest reasonable interpretation consistent with the specification. PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751 (Fed. Cir. 2016).” Id. at 3. The CAFC reversed the Board and held that the Board erred in its constructions of the terms “a fabric member” and “an enclosure member.”
Although the use of the singular articles “a” and “an” often means “one or more” when the transitional phrase “comprising” is used, Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016), in this instance, the Board’s construction is inconsistent with the use of the terms in the claims.
The ordinary language of the claims indicates that a single fabric or enclosure member is capable of separating the interior of the claimed crib from the exterior.
Id. at 3. The CAFC held that “a fabric member” and “an enclosure member” “must be unitary structures able to ‘delineate’ or ‘surround []’ an ‘enclosed space’.” Id. at 4. The CAFC held that their claim construction is consistent with the specification, including preferred embodiments, examples and the drawings. “Although we must be careful not to read limitations from the specification into the claims, the specification’s use of the claim terms in a manner consistent with their use in the claims further supports our conclusion.” (emphasis added) Id. at 4. The CAFC dismissed the Board and Baby Trend’s reliance upon prosecution history to support the original claim construction by noting that claim amendments by Wonderland “were part of a series of changes emphasizing that the ‘fabric/enclosure member surrounds an enclosed space adapted for receiving a baby therein’ J.A. 1853, made in response to the examiner’s citation to a prior art reference directed to chairs.” Id. at 4-5. The CAFC held that the proper construction of “a fabric member’ and ‘an enclosure member’ refer to unitary elements that separate the interior of the claimed crib from the exterior.” Id. at 5.
In light of the newly adopted claim construction, the CAFC held that the “Board’s alternative finding that the claims are unpatentable under the construction we now adopt is not supported by substantial evidence.” Id. at 5. Baby Trend, relying upon the Board’s finding that Vaiano taught a single, continuous member, argued that Vaiano disclosed the claimed features under the newly adopted claim construction. The CAFC disagreed, noting that the citation of Vaiano cited by the Board did not support their position, and that Vaiano merely discloses a netting feature. The CAFC concluded that the disclosure of Vaiano “does not indicate that the netting is a single, continuous member.” Id. at 5. Further, the CAFC dismissed Baby Trend’s argument that Vaiano depicts a continuous, single member because the lines of netting are aligned in one corner, as illustrated in Figure 1, by noting that the lines in the other corners were not aligned. “While it is possible that a single, continuous piece could be used in Vaiano, that is not the question before us. Instead, we ask whether Vaiano discloses a single, continuous piece. Substantial evidence does not support the Board’s finding that it does.” Id. at 6.
Id. at 5. Lastly, the CAFC dismissed Baby Trend’s argument that the Board inherently relied upon their expert testimony regarding the disclosure of Vaiano by noting that merely finding an argument persuasive does not deem said evidence adopted. “When the Board intends to rely on extrinsic evidence, it does so expressly. A single citation to 10 pages in a petition does not incorporate by reference every piece of evidence referenced therein. Similarly, Baby Trend may not rely on statements made by Administrative Patent Judges at the oral hearing that were not included in the Board’s written decisions.” Id. at 6.
Takeaway:
Review claim construction to ensure it is consistent with the specification. The disclosed use of a claim term can affect claim construction.
Carefully review each reference to determine if the Examiner’s understanding is accurate.
THE WRITTEN DESCRIPTION REQUIREMENT TO A CLAIM FOR A GENUS CAN BE SATISFIED IF A SINGLE SPECIES OF THAT GENUS IS DISCLOSED AND OTHER MEMBERS OF THAT GENUS ARE WELL KNOWN IN THE ART
| April 20, 2018
Hologic, Inc. v. Smith & Nephew, Inc. and Covidien LP
March 14, 2018
Before Newman, Wallach, and Stoll. Opinion by Stoll.
Summary:
Hologic, Inc. initiated an inter partes reexamination of U.S. Patent No. 8,061,359 (’359 patent. The ’359 patent claims priority to an earlier-filed PCT application with a nearly identical specification. The PTAB found that S&N’s PCT application has sufficient written description so that it is a proper priority document and is not an invalidating obviousness reference. The CAFC held that since substantial evidence supports the PTAB’s finding that the PCT application provides sufficient written description disclosure of the claimed feature, the ’359 patent is entitled to claim priority to the PCT application.
要旨:
米国特許第8,061,359号の当事者系リイグザミネーションに関するものである。当該特許は先行PCT出願とほぼ同一の明細書を含んでおり、この先行PCT出願に対して優先権を主張していた。米国特許庁審判部は、当該PCT出願は優先権主張に対する十分なサポートを含んでおり、よって、優先権主張は有効であるので、当該PCT出願の国際公開が先行技術になることはないと判断した。連邦巡回控訴裁判所(CAFC)は、米国特許庁審判部の判断を支持した。
Tags: drawings > expert declaration > Inter Partes Reexamination > PCT application > priority > written description
To Combine or not to Combine
| April 16, 2018
Ex parte Tesseir et al.
October 2, 2014
Before PTAB APJ Panel: Kerins, Staicovici & Woods.
Summary: The Board affirmed many of the rejections in this appeal of a Final Rejection. But the Board found that there was no motivation to support the obviousness rejection of claim 13 and therefore reversed the rejection of that claim.
要旨:
米国特許庁審判部は、最後の拒絶に対する本件アピール(拒絶査定不服審判に相当)に関し、審査官の拒絶理由の大部分を認めた。その一方、クレーム13に関する自明性の拒絶については、拒絶理由をサポートするだけの十分なモチベーション(動機付け又は理由付け)が存在しないと判断し、クレーム13に関する拒絶を覆した。具体的には、いわゆる後知恵を利用しなければ、審査官が主張するような引例の組み合わせを行なうだけの合理的な理由が存在しないと判断された。より具体的には、主引例は、既にリモート制御という構成要件を利用しており、特段の理由もなく、第2引例のリモート制御技術を組合わせるのは不合理であると判断された。
The CAFC Finds the Board’s Claim Construction to Be Unreasonably Broad
| April 13, 2018
In re Power Integrations, Inc.
March 19, 2018
Before Moore, Mayer, and Stoll. Opinion by Mayer.
Summary
Power Integrations, Inc. (“Power Integrations”) appeals a remand decision of the Patent Trail and Appeal Board (“Board”) rejecting claims 1, 17, 18 and 19 of US Patent No. 6,249,876 (the ‘876 patent) as anticipated under 35 U.S.C. §102(b). On appeal, the CAFC found the board’s claim construction to be unreasonably broad. Because the Board’s anticipation rejection was based on an unreasonably broad claim construction, the CAFC reversed.
要旨:
連邦巡回控訴裁判所(CAFC)の判決である。先に米国特許庁審判部へ差し戻され、米国特許庁審判部が再度判断を下したその判断の適否が争われた。米国特許庁審判部が広いクレーム解釈に基づいて「新規性なし」と判断した審決をCAFCは覆した。CAFCは、米国特許庁審判部のクレーム解釈はいわゆるBRI(Broadest Reasonable Interpretation)ではなく、Unreasonably(不当)に広いと判断した。そのような不当に広いクレーム解釈に基づいて引例の開示が当てはめられた新規性の判断が覆された。
Tags: 35 U.S.C. §102 > anticipation > broadest reasonable interpretation > claim construction
A Non-Overlapping Prior Art Range May Still Render a Claimed Range Obvious
| April 12, 2018
In re Brandt
March 27, 2018
Before Lourie, Reyna and Taranto. Opinion by Reyna.
Summary:
Brandt’s patent application (U.S. Application No. 13/652,858) is to high density polyurethane or polyisocyanurate construction boards. The claims recite a coverboard having a density greater than 2.5 and less than 6 lbs/ft3. In rejecting the claims, the Examiner cited Griffin (US 2006/0096205), which discloses a coverboard having a density of “between 6 lbs/ft3 and 25 lbs/ft3 and preferably a density of at least 8 lbs/ft3” and stated that the claimed range would have been an obvious design choice. The Patent Trial and Appeal Board (“PTAB”) agreed with the Examiner stating that even though the prior art range does not overlap the claimed range, the difference in the ranges was “virtually negligible.” The CAFC agreed that the ranges are “so mathematically close that the examiner properly rejected the claims as prima facie obvious and affirmed the PTAB’s rejection of the claims.
Words of limitation that can connote with equal force a structural characteristic of a product or a process of manufacture are interpreted as structural limitations by default.
| April 10, 2018
In Re Nordt Development Co., LLC
February 8, 2018
Before Moore, Taranto, and Stoll. Opinion by Stoll.
Summary:
The Federal Circuit vacates and remands a decision of the Patent Trial and Appeal Board (“Board”) affirming the Examiner’s rejection of claims 1 and 14 of U.S. Patent Application No. 13/241,865 (the ‘865 application). Specifically, the Federal Circuit held that the Board erred in construing “injection molded” limitations in claims 1 and 14 of the ‘865 application as process limitations with no patentable weight.
CAFC relies on extrinsic evidence to define a claim term and to demonstrate inherency
| February 23, 2018
Monsanto Technology LLC v. E.I. Dupont de Nemours & Co.
January 5, 2018
Before Dyke, Reyna and Wallach. Opinion by Wallach.
Summary
In this case, the CAFC affirmed a PTAB decision which relied on two pieces of extrinsic evidence. First, a journal article referred to by the specification was used to define the bounds of “about 3% or less.” Second, a Declaration submitted in the course of inter partes reexamination was used to demonstrate that claimed features are inherent in an anticipating reference. The CAFC explained that both were appropriate, and the claims are invalid as being anticipated by the cited art.
CAFC looks to complete disclosure of patent at issue and its related patents to counter patent owner’s arguments based on cherry-picking.
| February 8, 2018
Paice LLC v. Ford Motor Company
February 1, 2018
Before Lourie, O’Malley, and Taranto. Opinion by O’Malley
Summary
Due to error in the PTAB’s interpretation of incorporation by reference, the CAFC vacated the PTAB’s obviousness determination with respect to claims that relied on the incorporation by reference for their written description, and found substantial evidence to affirm the PTAB’s findings of obviousness of all other claims.
Tags: claim construction > Incorporation by reference > obviousness > written description
The USPTO cannot refuse registration of immoral or scandalous marks
| January 31, 2018
In re Erik Brunetti
December 15, 2017
Before: Dyk, Moore, Stoll. Opinion by Moore; Concurring opinion by Dyk
Summary:
The §2(a) bar on registration of immoral or scandalous marks violates First Amendment. While the CAFC opinion finds the use of immoral or scandalous marks in commerce to be discomforting, the First Amendment protects private expressions, including those that may be offensive. In this instance, the government does not have substantial interest that would justify its suppression of immoral or scandalous trademarks.
Matal v. Tam, 137 S. Ct. 1744 (2017)において、ランハム法第2(a)条に基づき、最高裁が誹謗的（disparagement）な商標を拒絶することは憲法違反であると判断したのと同様に、米国特許商標庁が、ランハム法第2(a)条に基づき、不道徳的又は中傷的（immoral or scandalous）な商標を拒絶することは、憲法修正第1条違反であるとCAFCは判決を下した。
Another “key” decision on joint/divided infringement
| January 16, 2018
Travel Sentry, Inc. v. Tropp (Precedential)
December 19, 2017
Before Lourie, O’Malley and Taranto. Opinion by O’Malley.
Summary:
Recent developments in the joint/divided infringement case law allow David Tropp to revive his patent infringement lawsuit against Travel Sentry and various other luggage manufacturers. Tropp’s patents claim a method for luggage inspection, where the luggage manufacturer supplies special locks on luggage and a master key, and TSA uses the master key to inspect the luggage.
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