Tuesday, April 19, 2016


According to the CAFC, PTAB's BRI was unreasonably broad in IN RE: MAN MACHINE INTERFACE

Teva was mentioned, but had no impact:

“[W]e review the Board’s ultimate claim constructions
de novo and its underlying factual determinations involving
extrinsic evidence for substantial evidence.” Prolitec,
Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358
(Fed. Cir. 2015) (citing Teva Pharm. U.S.A., Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841–42 (2015)). In this case,
“because the intrinsic record fully determines the proper
construction, we review the Board’s claim constructions
de novo.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1297 (Fed. Cir. 2015). In reexamination, claims are
given their broadest reasonable interpretation (“BRI”)
consistent with the specification. In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984). “While the Board must
give the terms their broadest reasonable construction, the
construction cannot be divorced from the specification and
the record evidence.” In re NTP, Inc., 654 F.3d 1279, 1288
(Fed. Cir. 2011).

Of BRI, the CAFC noted:

This court’s cases on
BRI make clear that the proper BRI construction is not
just the broadest construction, but rather the broadest
reasonable construction in light of the specification.
Proxyconn, 789 F.3d at 1298 (“A construction that is
unreasonably broad and which does not reasonably reflect
the plain language and disclosure will not pass muster.”
(internal quotation marks and citations omitted)).


As we have
explained, “[a]bove all, the broadest reasonable interpretation
must be reasonable in light of the claims and
specification.” PPC Broadband, Inc. v. Corning Optical
Commc’ns RF, LLC, No. 2015-1364, 2016 WL 692369, at
*5 (Fed. Cir. Feb. 22, 2016). Thus we reject the Board’s
unreasonable construction, instead construing “thumb
switch being adapted for activation by a human thumb” in
view of the specification to mean “thumb switch being
made or designed for activation by a human thumb.”

Of briefing issues, footnote 2:

We cannot consider the obviousness rejections of
claims 7, 9, and 17 because neither party introduced those
arguments on appeal besides challenging the claim constructions
on which they are based. Accordingly, we
vacate those rejections and remand for the Board to
consider the obviousness rejections of claims 7, 9, and 17
in view of the correct claim constructions.

link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1562.Opinion.4-15-2016.1.PDF


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