Tuesday, October 23, 2012

CAFC in FLO Healthcare: we correct the Board’s analysis, but affirm the Board’s conclusion. The issue of "broadest reasonable interpretation."

In a case, FLO Healthcare, involving an appeal from the results of Reexamination No. 95/000,251, the CAFC affirmed the result obtained by the BPAI.

Footnote number 1 related to the AIA: Pursuant to the America Invents Act (“AIA”)
amendments to Title 35 (see Public Law 112-29), the
Board officially changed its name from the Board of
Patent Appeals and Interferences to the Patent Trial and
Appeal Board on September 16, 2012.

Of the technology, the patent under reexamination, United States Patent No. 6,721,178, describes a mobile computer work- station intended for medical care environments. The PTO granted Rioux’s request for inter partes re- examination, finding a substantial new question of pat- entability with respect to all forty-four claims of the ’178 patent. The examiner initially issued thirteen different obviousness rejections, nine of which relied on United States Patent No. 5,287,815 to Gross (“Gross”) as a pri- mary reference.

Footnote 4 also related to the AIA: “Unlike an ex parte reexamination pro- ceeding, an inter partes reexamination proceeding allows the third-party requester to participate in the reexamina- tion by submitting written comments addressing issues raised in the patent owner’s response to an office action, appealing a decision in favor of patentability, and partici- pating as a party to an appeal taken by the patent owner.” Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1332 (Fed. Cir. 2008). Effective September 16, 2012, the AIA amendments replaced inter partes reexaminations with a new inter partes review process. 35 U.S.C. §§ 311-319.

Of the legal issue:

Our cases have established two guidelines for deter- mining whether the special rules of claim construction set forth in § 112, ¶ 6 apply to a given claim limitation. The guidelines are straightforward: use of the word “means” creates a rebuttable presumption that the drafter in- tended to invoke § 112, ¶ 6, while failure to use the word “means” creates a rebuttable presumption that the drafter did not intend the claims to be governed by § 112, ¶ 6. See Personalized Media Commc’ns LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). In rebut- ting the presumption, when a claim recites a function “but then goes on to elaborate sufficient structure, mate- rial, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format even if the claim uses the term means.” Id. at 704 (quoting Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997) (internal quotes omitted)). Conversely, “a limitation lacking the term ‘means’ may overcome the presumption against means-plus-function treatment if it is shown that ‘the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.’” Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1353 (Fed. Cir. 2006) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002)).
Since the term “means” is not present in the claims on appeal, it is the latter form of rebuttal that is at issue here. The Board determined that the presumption was sufficiently rebutted because “the disputed claim limita- tion [height adjustment mechanism] does not recite sufficient structure for performing the recited function.” Board Opinion, 2011 WL 289281, at *9. According to the Board, “the terms ‘height adjustment’ merely qualify the recited ‘mechanism,’ which has not been shown to inher- ently impart structure, with a function or purpose (‘height adjustment’).” Id. Thus, the Board “conclude[d] that the disputed claim limitation must be interpreted in accor- dance with 35 U.S.C. § 112, ¶ 6.” Id.
We are not convinced that the presumption against a means-plus-function construction is that easily rebutted. “Our cases make clear . . . that the presumption flowing from the absence of the term ‘means’ is a strong one that is not readily overcome.” Lighting World, Inc. v. Birch- wood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). When the claim drafter has not signaled his intent to invoke §112, ¶6 by using the term “means,” we are unwilling to apply that provision without a showing that the limitation essentially is devoid of anything that can be construed as structure. See Masco Corp. v. United States, 303 F.3d 1316, 1327 (Fed. Cir. 2002). Thus, we will not apply § 112, ¶ 6 if the limitation contains a term that “is used in common parlance or by persons of skill in the pertinent art to designate structure.” Lighting World, 382 F.3d at 1359.
It is the case that the generic term “mechanism” standing alone may connote no more structure than the term “means.” Mass. Inst. of Tech., 462 F.3d at 1354. However, we have also recognized that surrounding claim language further defining the mechanism can add suffi- cient structure to avoid a § 112 ¶ 6 construction. Id. In Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996), for example, we held that § 112, ¶ 6 did not apply to the claim limitation “detent mechanism” because dictionary definitions established that “the noun ‘detent’ denotes a type of device with a generally under- stood meaning in the mechanical arts . . . .” Id. at 1583.

Bottom line: We find that the term “height adjustment mechanism,” as used in the ’178 patent and in common parlance, reasonably imparts sufficient structure so that the presumption against applying § 112, ¶ 6 in this context is not overcome. Accordingly, the Board erred by construing the “height adjustment mechanism” limitation under § 112, ¶ 6.6 We thus disapprove that portion of the Board’s decision.7

The catch: However, although the Board’s decision was predi- cated upon a legally erroneous construction of the “height adjustment mechanism” limitation, we nevertheless agree with the Board’s ultimate conclusion that the claims do not require a length-adjustable vertical beam. Board Opinion, 2011 WL 289281, at *9. The claims themselves do not recite such a limitation. It is true that all of the embodiments discussed in the patent have a length- adjustable vertical beam, but it is not proper to import from the patent’s written description limitations that are not found in the claims themselves. Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 792 (Fed. Cir. 2010) (“A construing court’s reliance on the specification must not go so far as to import limitations into the claims from examples or embodiments appearing only in a patent’s written description unless the specification makes clear that the patentee intends for the claims and the embodi- ments in the specification to be strictly coextensive.”) (internal quotation marks omitted).

And the result:

Based on our review of the record, we are satisfied that the factual determinations underlying the Board’s decision are supported by substantial evidence, and that the Board came to the correct legal conclusions based on those facts. Flo does not suggest otherwise. Flo’s only argument on appeal is that the prior art fails to teach or suggest a length-adjustable vertical beam. But as we have discussed, the claims on appeal when properly construed do not require a length-adjustable vertical beam. And as Flo acknowledges, the prior art rejections must stand in the absence of such a limitation. Oral Argument at 8:10-8:40, available at http://www.cafc. uscourts.gov/oral-argument-recordings/2011-1476/all. We thus affirm the Board’s decision that the claims are not allowable.

Chenery arose in footnote 7:

This court has long recognized that we may, “where appropriate, affirm the agency on grounds other than those relied upon in rendering its decision, when upholding the agency’s decision does not depend upon making a determination of fact not previously made by the agency.” In re Comiskey, 554 F.3d 967, 974 (Fed. Cir. 2009). We also need not remand for further proceed- ings before the PTO as we did in In re Aoyama, 656 F.3d 1293 (Fed. Cir. 2011), since Flo would not have had the opportunity to further amend the claims or submit new evidence rebutting the presumption against application of 35 U.S.C. § 112, ¶ 6 had the Board upheld the examiner’s claim construction in the first place.

Judge Plager made some additional remarks:

One standard of review is exemplified by the 1997 decision of this court in In re Morris.1 In Morris, the first issue decided was whether, in light of two then-recent en banc decisions by this court, Markman2 and In re Donaldson,3 the Board was free to continue applying its “broadest reasonable interpretation” standard to claim construction issues before it. We held “yes.” Morris continues to be cited to this day by the PTO as authority for the Board to apply that standard to claim construction when an appeal is taken to the Board from an examiner’s rejection of a claim. See, e.g., the Government’s brief in this case at p. 14.


Later in the opinion, however, the court stated a no- deference test regarding review of the Board’s claim construction, comparable to that of district court construc- tions: “Although the PTO gives claims the broadest reasonable interpretation consistent with the written description . . . claim construction by the PTO is a ques- tion of law that we review de novo, . . . just as we review claim construction by a district court.”10 As authority for that proposition Baker Hughes cited the earlier en banc opinion in In re Donaldson; Morris was not cited.
The consequence of all this is that we now appear to have two contradictory lines of authority on the question of how this court reviews Board claim constructions—a deferential “reasonable” (arbitrary/capricious-type) re- view, and a no-deference “pure” law type review.


The question then becomes whether claim construc- tion by the Board is to be considered a question of “pure” law—the way this court treats claim construction in district court litigation under Cybor Corp.14—and thus to be reviewed without deference; or whether it is something else, a blend of law and fact and judgment—as the Su- preme Court said in Markman,15 a “mongrel practice”—in which case it is at least arguably subject to the “arbitrary and capricious” standard of APA § 706. Interestingly, none of the cases applying the Baker Hughes no-deference standard has paused to explain why that is the preferable standard as a matter of law or policy, or how it relates to the review standard that the Board uses.


However, that creates at least the appearance of an incompatible situation in the review process, since this court presumptively would be applying a more narrow interpretation to the claims than the Board did. To the extent the Board upholds an examiner’s “broadest rea- sonable interpretation” of a claim, even though the Board might itself have thought a different construction was the single “correct” one, there is a potential for the Board to find itself overruled on appeal even though it might have arrived at the same interpretation as the appellate court under a more narrow standard.19 Given that this court’s role in these cases is to review an agency decision on the record before the agency, the question must be asked whether a no-deference standard is consistent with that role, and with the deference that Zurko commands this court give to the PTO.

This incompatibility concern assumes that there is a substantive difference, rather than just a verbal one, between the “broadest reasonable interpretation” and what would be the single “correct” interpretation. Said another way, it assumes that, conceptually at least, the Board’s application of the “broadest reasonable interpre- tation” of the contested claim language can include within it the single “correct” interpretation, but may include other reasonable interpretations as well.

As to policy

Rules of law provide the predictions for future deci- sions, on which citizens can rely in the conduct of their activities. As a court of appeals, it is this court’s function to decide the cases before it, but also to rationalize and clarify the applicable rules of law. When, as here, there exists an unnecessary lack of clarity in our rules, I believe we have an obligation as a court to address the problem and, if possible, correct it.

Judge Newman noted:

In the reexamination appeal now before us, the PTO states in its brief that “During reexamination – as in ex parte prosecution – claims are given their broadest rea- sonable interpretation consistent with the specification . . .” That is correct. However, the PTO then advises: “Thus, this Court reviews the USPTO’s interpretation of dis- puted claim language to determine whether it is ‘reason- able’ in light of the specification.” That is incorrect. It is incorrect to convert a search and examination expedient into a requirement of appellate deference. I again remind
us of the problems the Federal Circuit was designed to remedy:

[T]here are areas of the law in which the appellate courts reach inconsistent decisions on the same issue, or in which—although the rule of law may be fairly clear—courts apply the law unevenly when faced with the facts of individual cases. . . . merger of the Court of Claims and the Court of Customs and Patent Appeals addresses these problems.

S. Rep. 96-304, at 9 (1979). This purpose requires the establishment of uniform law, and its correct application.


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