Monday, March 19, 2018

CAFC addresses "broadest reasonable interpretation" in Power Integrations; PTAB reversed

PTAB was reversed by the CAFC in Power Integrations:

Because the board’s anticipation rejections
were based on an unreasonably broad claim construction,
we reverse.

Of specifics:

We acknowledged that “the board is not generally
bound by a prior judicial construction of a claim term” and
that “in reexamination [the board] applies a different
claim construction standard than that applied by a district
court.” Id. at 1326. We concluded, however, that
since “Power Integrations’ principal argument to the
board about the proper interpretation of the term ‘coupled’
was expressly tied to the district court’s claim construction,
. . . the board had an obligation . . . to evaluate
that construction and to determine whether it was consistent
with the broadest reasonable construction of the
term.” Id. at 1327.
On remand, the board acknowledged that this court
had expressed “concern” that its original decision had
failed to assess whether the district court’s interpretation
of the term “coupled” was consistent with the broadest
reasonable construction of the term. Remand Decision,
2016 Pat. App. LEXIS 11870, at *9. It concluded, however,
that a comparison of its claim construction with that of
the district court was “unwarranted.” Id. In the board’s
view, a district court’s claim construction is “typically”
narrower than the broadest reasonable construction of a
term. Id. at *16.
In again affirming the examiner’s rejection of claims
1, 17, 18, and 19 as anticipated, the board continued to
adhere to a generalist dictionary definition of the term
“coupled.” Id. at *8. The board stated that it could
“glean[] no substantial guidance from either the context of
the claim itself or the Specification” regarding the meaning
of the term. Id. The board determined, moreover,
that “even if claim 1 requires the counter to drive the
digital to analog converter,” this “does not preclude the
counter and a memory functioning together” to cause the
converter to adjust the control input. Id. at *14.
Power Integrations then appealed to this court. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35
U.S.C. § 141(b).


“While the broadest reasonable interpretation standard
is broad, it does not give the [b]oard an unfettered
license to interpret the words in a claim without regard
for the full claim language and the written description.”
Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed.
Cir. 2016). The board’s claim construction here was
unreasonably broad and improperly omitted any consideration
of the disclosure in the specification. See Novartis
Pharm. Corp. v. Abbott Labs., 375 F.3d 1328, 1334 (Fed.
Cir. 2004) (“Even when guidance is not provided in explicit
definitional format, the specification may define claim
terms by implication such that the meaning may be found
in or ascertained by a reading of the patent documents.”
(citations and internal quotation marks omitted)); Slimfold
Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116
(Fed. Cir. 1987) (“Claims are not interpreted in a vacuum,
but are part of and are read in light of the specification.”).
Under the board’s overly expansive view of the term
“coupled,” every element anywhere in the same circuit is
potentially “coupled” to every other element in that circuit,
no matter how far apart they are, how many intervening
components are between them, or whether they
are connected in series or in parallel. See In re Suitco
Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (“The
broadest-construction rubric coupled with the term ‘comprising’
does not give the PTO an unfettered license to
interpret claims to embrace anything remotely related to
the claimed invention.”). On appeal, the Director
acknowledges that claim 1 requires some type of “functional
relationship between the counter and the digital-toanalog
converter.” The problem is that the board’s claim
construction does not define what type of functional
relationship is required. The board suggests that the
counter will “cause” the digital to analog converter to
adjust the control input and to vary the switching frequency
regardless of how insignificantly or indirectly the
counter’s output affects the converter’s behavior. See
Remand Decision, 2016 Pat. App. LEXIS 11870, at *14
(concluding that the counter “causes” the digital to analog
converter to adjust the control input and to vary the
switching frequency even if the switching frequency
varies according to data contained in a memory).
“[C]laim construction must begin with the words of
the claims themselves.” Amgen Inc. v. Hoechst Marion
Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006). By its
plain terms, claim 1 requires the counter to “caus[e]” the
converter to adjust the control input and to vary the
switching frequency. J.A. 817. Nothing in the claim
language suggests that this requirement will be met if, as
in the prior art, the digital to analog converter’s output
varies based on data stored in a memory rather than
according to signals relayed from the counter itself. See
Power Integrations V, 843 F.3d at 1329 (explaining that in
Martin and Wang the frequency of the oscillator is varied
“through the use of a pseudo-random code stored in readonly
memory (ROM)”).
Another problem with the board’s claim construction
is that it renders claim language meaningless. As discussed
above, claim 1 begins by reciting a “circuit” that
includes both a counter and a digital to analog converter.
J.A. 817. The phrase “the digital to analog converter [is]
coupled to the counter,” J.A. 817, would be superfluous if,
as the board said, it means only that the two components
are in the same circuit. See, e.g., Bicon, Inc. v. Straumann
Co., 441 F.3d 945, 950–51 (Fed. Cir. 2006) (refusing
to construe claim terms in a way that made other claim
limitations meaningless);


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