Friday, January 29, 2021

The CAFC debates the meaning of the word "each" in Keynetik v. Samsung

The panel agreed on a point of legal error by the Board. From Judge O'Malley's separate opinion:

I agree with the majority that the Board’s analysis of claims 4, 7, 15, and 18 was fundamentally flawed because it applied an incorrect legal standard. As to those claims, the Board stated that Samsung had no burden to establish a reasonable expectation of success from combining the prior art references at issue. We have held the exact opposite. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,1367–68 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’”). The Board’s error on this point could not be clearer.


Finally, without any support in the intrinsic record, the Board found that the orientation detector limitation’s use of the word “each” in the phrase “detect orientation towards gravity for each slow motion phase” can refer to “one or more” slow motion phases. Board Decision, 2019 Pat. App. LEXIS 13034, at *22–24. In reaching this construction, the Board credited the conclusory opinion of Samsung’s expert, who testified that, “in the context of the claims, ‘each’ can refer to one or more.” Id. at *23–24. We have recognized, however, that “conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005). Indeed, Samsung presented no evidence to support its interpretation of “each,” and conceded during oral argument before the Board that it had not “tried that hard” to find any evidence. J.A. 729 at ll. 4–9.

The Board then provided its own example of “each” meaning “one or more,” stating that, “if one addressed a room full of people and asked each WW1 veteran to stand and only one person stood, each WW1 veteran would have stood.” Board Decision, 2019 Pat. App. LEXIS 13034, at *24. But we have expressly recognized that the plain meaning of “each” refers to “two or more” people or things. Alcohol Monitoring Sys., Inc. v. Actsoft, Inc., 414 F. App’x 294, 299–300 (Fed. Cir. 2011) (“We agree with the district court that the plain meaning of ‘each’ is defined as ‘being one of two or more distinct individuals . . . .’” (quoting Merriam-Webster’s Collegiate Dictionary, 390 (11th ed. 2007)). That the Board came up with an example where the term “each” might be used differently cannot overcome its general usage in the English language, especially where the Board’s example is grammatically suspect. The proper phrasing, using the Board’s example, would ask any or all WW1 veterans to stand, which would account for the possibility of there being only one (or none).

The Board’s construction, which the majority again accepts, is inconsistent with the intrinsic record and defies common English usage of the word “each.” In my view, the broadest reasonable interpretation of the “orientation detector limitation” consistent with the specification is detect orientation (singular) of two or more slow motion phases.


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