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Appeal from Board’s Improper Application of Means-Plus-Function Claim Construction Spurs Call for En Banc Decision on Proper Standard of Review

October 23, 2012

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Last Month at the Federal Circuit - November 2012

Judges: Newman (additional views), Plager (author and additional views), Wallach

[Appealed from: Board]

In Flo Healthcare Solutions, LLC v. Kappos, No. 11-1476 (Fed. Cir. Oct. 23, 2012), the Federal Circuit affirmed the Board’s conclusion on inter partes reexamination that claims of U.S. Patent No. 6,721,178 (“the ’178 patent”) were obvious, but corrected the Board’s analysis by not construing the disputed claims as means-plus-function limitations under 35 U.S.C. § 112, ¶ 6.

The ’178 patent is owned by Flo Healthcare Solutions, LLC (“Flo”) and is directed to a mobile computer workstation intended for medical care environments. Flo sued Rioux Vision, Inc. (“Rioux”) for patent infringement, and Rioux requested reexamination of the ’178 patent. The PTO found substantial new questions of patentability with respect to the ’178 patent’s claims, and the examiner objected to some claims and rejected others as obvious. In response to an Action Closing Prosecution, Flo amended the objected claims to place them in allowable format and argued that the rejections as to claims reciting a “height adjustment mechanism” were improper, because that limitation is a means-plus-function limitation that invokes § 112, ¶ 6. The examiner issued a Right of Appeal Notice maintaining the rejections. The Board agreed with Flo that the “height adjustment mechanism” limitation must be interpreted in accordance with § 112, ¶ 6, but affirmed the rejections after construing the limitation as not requiring a length-adjustable vertical beam. Flo appealed to the Federal Circuit.

On appeal, the Federal Circuit first held that the Board erred in finding that the “height adjustment mechanism” limitation invokes § 112, ¶ 6. The Court explained that failure to use the word “means” in the claim created a rebuttable presumption that the drafter did not intend the claims to be governed by
§ 112, ¶ 6, and that this presumption is strong and not readily overcome. The Court stated that it is unwilling to apply § 112, ¶ 6 “without a showing that the limitation essentially is devoid of anything that can be construed as structure.” Slip op. at 10 (citing Masco Corp. v. United States, 303 F.3d 1316, 1327 (Fed. Cir. 2002)). The Court found that the “height adjustment mechanism” term, as used in the ’178 patent and in common parlance, reasonably imparted sufficient structure such that the presumption was not overcome.

Despite holding that the Board erred in applying § 112, ¶ 6, the Federal Circuit agreed with the Board’s ultimate conclusion that the claims do not require a length-adjustable vertical beam. The Court explained that even though all of the embodiments in the ’178 patent have a length-adjustable vertical beam, the limitation was absent from the claims and could not be imported from the ’178 patent’s written description. The Court stated that it would not read the limitation into the claims on appeal, because Flo did not amend the claims during reexamination to directly include a length-adjustable vertical beam.

After applying the corrected claim construction to the prior art rejections, the Court found that the Board’s factual determinations underlying the decision were supported by substantial evidence, and that the Board came to the correct legal conclusions based on those facts.

In his Additional Views, Judge Plager stated that the Court “appear[s] to have two contradictory lines of authority on the question of how [it] reviews Board claim constructions—a deferential ‘reasonable’ (arbitrary/capricious-type) review, and a no-deference ‘pure’ law type review.” Plager Additional Views at 4. Judge Plager contended that “[w]hichever way this court’s review rule should be cast, and for whatever reasons, it is perhaps time that the court definitely decide en banc on an agreed review standard, one that provides clear direction to the PTO and the inventor community.” Id. at 9.

Judge Newman stated in her Additional Views that the appeal illustrates a situation “where the same issue can be finally adjudicated to different appellate outcomes, depending on the tribunal from which it came.” Newman Additional Views at 4. Judge Newman contended that the distortion appeared to be related to misunderstanding the role of the “broadest reasonable interpretation” in patent examination, and encouraged “remedial attention.” Id. Judge Newman stated that she “agree[d] with Judge Plager’s analysis of this situation, in his ‘Additional Views’ herewith, but [that she is] impatient with the absence of resolution of the conflicts that have arisen.” Id.

Summary authored by Amanda L. Lutz, law clerk at Finnegan.