Claims Are Construed in Light of the Originating Disclosure When a Party Challenges Written Description Support During an Interference Proceeding
May 05, 2010
Last Month at the Federal Circuit - June 2010
Judges: Linn, Plager (author), Dyk
[Appealed from: Board]
In Robertson v. Timmermans, No. 09−1222 (Fed. Cir. May 5, 2010), the Federal Circuit vacated the Board’s decision in an interference proceeding and remanded because the Board had incorrectly relied on the host disclosure rather than the originating disclosure when reviewing a written description challenge.
Jones J. Robertson and Robert M. Currie (collectively “Robertson”) own U.S. Patent No. 6,860,628 (“the ’628 patent” or “the Robertson patent”). The ’628 patent is directed to light−emitting diode (“LED”) replacement tubes for conventional fluorescent light tubes. Jos Timmermans and Jean C. Raymond (collectively “Timmermans”) own U.S. Patent Application No. 11/085,744 (“the ’744 application” or “the Timmermans application”). To provoke an interference, Timmermans copied claims 1 and 4 of the ’628 patent into the ’744 application as claims 8 and 9.
During the interference, Robertson alleged that claims 8 and 9 were unpatentable for lack of written description support as required by 35 U.S.C. § 112, ¶ 1. Robertson contended that the Timmermans application did not provide an adequate written description of the claimed “solid, rigid, translucent rod.” At issue was the meaning of the term “solid” when used to modify “rod.” While Timmermans argued that “solid” means the rod is in its solid physical state and not its liquid or gaseous state, Robertson argued that “solid” means the rod is “an object that is continuous, full of matter, and not hollow within the general outlines of its shape.”
The Board construed claims 8 and 9 by applying 37 C.F.R. § 41.200(b), which states that a “claim shall be given its broadest reasonable construction in light of the specification of the application or patent in which it appears.” (Emphasis added.) Thus, the Board looked to Timmerman’s written description, which does not use the term “solid” to describe or refer to anything. Slip op. at 4. The Board concluded that the broadest reasonable construction of “solid” in light of the Timmermans application is that “the rod is in its solid physical state rather than its liquid or gaseous state.” Id. (citation omitted). Based on this claim construction, the Board found that Robertson failed to show that claims 8 and 9 were unpatentable for lack of written description support. Robertson appealed.
Since the Board’s decision here, the Federal Circuit noted that it has twice held that “when a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language.” Id. at 5 (quoting Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009)); see also Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1335 (Fed. Cir. 2010).
In Agilent, the Court examined two of its prior decisions involving claim construction during interference proceedings, In re Spina, 975 F.2d 854 (Fed. Cir. 1992), and Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997). Spina held that a claim copied from an issued patent is “viewed in the context of the patent from which it was copied.” Slip op. at 5 (quoting Spina, 975 F.2d at 856). In Rowe, claims copied from one party’s patent into the other party’s application were the subject of a motion for invalidity based on prior art. Rowe held that the Spina rule did not apply, but instead the claims should be interpreted in light of their host disclosure, just as they would during ex parte prosecution.
According to the Court, Agilent clarified that in interference proceedings, “the Board must interpret the copied claim in view of the originating disclosure for a written description challenge, and the Board must interpret the copied claim in view of the host disclosure for a validity challenge based on prior art.” Id. at 6. The Court also stated that Agilent made clear that 37 C.F.R. § 41.200(b) “does not apply in an interference proceeding when one party makes a written description challenge to a claim that another party has copied in order to provoke the interference.” Id. By way of acknowledgement, the PTO recently “cancelled 37 C.F.R. § 41.200(b) and expressly stated that the Board will construe claims in an interference proceeding in a manner consistent with Agilent.” Id.
The Court found that the Board, without the benefit of the Agilent and Philips decisions, had erroneously construed the term “solid, rigid, translucent rod” of claims 8 and 9 in light of the Timmermans application. Because Timmermans copied the claims from the Robertson patent, the Board should have construed the claims in view of the Robertson disclosure for purposes of Robertson’s motion alleging that the claims were unpatentable for lack of written description under § 112, ¶ 1. Id. at 7.
Timmermans argued that the Board’s failure to apply the Spina rule was immaterial because both parties relied on common dictionary definitions of “solid” without reference to either written description. The Court reasoned that when faced with two alternative common meanings, the Board found it necessary to consult the specification to determine the proper claim construction. The Board just chose the wrong specification.
In addition, Timmermans argued that the Board’s claim construction was consistent with both the Robertson patent and the Timmermans application. Robertson urged the Court to construe the claims in its favor, find that the Timmermans application lacked sufficient written description support for claims 8 and 9, and conclude that there was no interference−in−fact between the Robertson patent and the Timmermans application.
Because the Board issued its decision prior to Agilent, the Court decided to give the Board the opportunity to apply the correct law rather than decide these issues in the first instance. On remand, the Court instructed the Board to construe Timmermans’s claims 8 and 9 in light of the Robertson patent and then determine whether the claims, properly construed, have sufficient written description support in the Timmermans application.
Summary authored by Jeremy P. Bond, student associate at Finnegan.