Board Claim Construction During Reexamination May Be Broad but Not Unreasonably Broad
April 14, 2010
Last Month at the Federal Circuit - May 2010
Judges: In re Suitco Surface, Inc.,
[Appealed from: Board]
In In re Suitco Surface, Inc., No. 09-1418 (Fed. Cir. Apr. 14, 2010), the Federal Circuit vacated-in-part, affirmed-in-part, and remanded the Board’s rejection of certain claims of U.S. Patent No. 4,944,514 (“the ’514 patent”) as anticipated because the Federal Circuit found the Board’s construction of “material for finishing the top surface of a floor” unreasonable. Substantial evidence, however, supported the Board’s finding with respect to a second claim limitation.
Suitco Surface, Inc. (“Suitco”) owns the ’514 patent, which is directed to an improved “floor finishing material.” A representative claim, claim 4, recites “an improved material for finishing [a] top surface of [a] floor,” which includes, among other things, “at least one elongated sheet including a uniform flexible film of clear plastic material” and “a continuous layer of adhesive material.” In 1996, in an infringement suit against 3M Company (“3M”), the district court construed the terms “material for finishing” and “uniform flexible film.” Subsequently, 3M moved for, and the district court granted, SJ of noninfringement based on the “material for finishing” limitation. On appeal, the Federal Circuit vacated the district court’s grant of SJ and remanded, finding the district court’s construction of the term “material for finishing” unsupported by the specification or prosecution history of the ’514 patent.
On remand, the district court again granted 3M’s motion for SJ, this time based on the “uniform flexible film” limitation. The Federal Circuit again vacated and remanded, taking issue with the district court’s construction of the term “uniform flexible film.” After the second remand, the case was transferred to the Southern District of Iowa, which stayed the case after the PTO granted 3M’s ex parte reexamination request. Subsequently, the examiner rejected claims 4-8 of the ’514 patent as anticipated by U.S. Patent No. 3,785,102 to Amos (“Amos”), claims 4 and 6-8 as anticipated by U.S. Patent No. 4,543,765 to Barrett (“Barrett”), and claims 4-5 as anticipated by U.S. Patent No. 4,328,274 to Tarbutton. Amos teaches a floor-covering pad comprised of a plurality of plastic sheets connected by a plurality of adhesive layers. Barrett teaches the use of a clear plastic film connected to a floor with an adhesive layer.
The Board affirmed the rejection of claim 4 of the ’514 patent in view of either Amos or Barrett and claim 8 of the ’514 patent in view of Amos. The Board construed the term “material for finishing the top surface of the floor” to mean “requiring a material that is structurally suitable for placement on the top surface of a floor,” and the term “uniform flexible film” to mean “including, for example, a flexible film having the same thickness throughout, as well as a flexible film having the same textured surface throughout.” Suitco appealed, challenging the Board’s construction of the term “material for finishing the top surface of the floor,” and asserting that Amos and Barrett do not show a “uniform flexible film” as construed by the Board.
On appeal, the Federal Circuit did not address whether the Board was bound by the Federal Circuit’s earlier interpretation of “material for finishing the top surface of the floor” because, even allowing the broadest reasonable construction, the Court found the Board’s construction unreasonably broad. Specifically, the Federal Circuit found that, under the Board’s construction, the “material for finishing” does not need to be the top-most layer on a surface to be finished. The Court, however, found that when read in the appropriate context of the claim language and specification, the broadest reasonable construction is “a clear, uniform layer on the top surface of a floor that is the final treatment or coating of a surface.” Slip op. at 9. The Court cautioned that “[t]he 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.” Id. at 8. Because the Board based its rejection on its unreasonable construction, the Court remanded with instructions to conduct a new invalidity analysis using the appropriate construction.
Turning to the “uniform flexible film” limitation, the Federal Circuit disagreed with Suitco that neither Amos nor Barrett teaches a “uniform flexible film” as defined by the Board. In the Court’s view, while Amos and Barrett do not expressly use the word “uniform,” each reference discloses the claim element. The Court therefore found substantial evidence supporting the Board’s finding that both Amos and Barrett anticipate claim 4 of the ’514 patent. The Court declined to consider Suitco’s separate anticipation argument with regard to claim 6 because it was not before the Board and thus waived.
Summary authored by Judy W. Chung, Esq.