PTAB Judge Issues First Dissent on Claim Construction

In a PTAB first, an administrative law judge concurred with the majority’s unpatentability conclusions while disagreeing with the majority’s construction of a key term in the patent.

The decision, Smith & Nephew, Inc. v. Convatec Technologies, Inc., held unpatentable thirteen claims directed to methods of enhancing photostability of silver in antimicrobial material useful for wound dressings and medical devices. IPR2013-00102, Paper 87 (P.T.A.B. May 29, 2014). Though agreeing on the ultimate result of unpatentability, the panel disagreed on the construction of the term “substantially photostable.”

The majority, Judge Rae Lynn P. Guest, joined by Judge Lora M. Green, first noted that the patent “defines the term ‘photostable,’ as having a ‘[c]ontrolled colour change to a desired colour with minimal change thereafter.’” The majority then “interpret[ed] the term ‘desired color’ reasonably broadly to encompass any color that may be desirable to one of ordinary skill in the art for any purpose.” Based on that broad interpretation, the majority rejected ConvaTec’s argument that one of ordinary skill in the art would consider purple an undesirable color.

Judge Sheridan K. Snedden dissented from that construction, noting that “[u]nder the majority’s claim construction, the ‘desired colour’ referenced within the meaning of ‘photostable’ includes any color . . . desirable for any purpose, including aesthetic purposes.” Judge Snedden found that “’desired color’ should be interpreted from a more technical viewpoint—that is, color is a measure of photostability.” Judge Snedden further found that the evidence showed that “purple is not a ‘desired colour’ within the meaning of ‘photostable’” and that a person of ordinary skill in the art would have found the “desired colour” was white or grayish-white.

Judge Snedden similarly disagreed with the majority and found that “a change of color from a desirable color to an undesirable color would not be considered a ‘minimal change’” within the meaning of “photostable.” Nevertheless, Judge Snedden still found ConvaTec’s patent unpatentable based on an example in the prior art that he concluded met his definition of “substantially photostable” as used in the claims.

It will be interesting to see what affect, if any, Judge Snedden’s claim construction dissent will have on the Federal Circuit should the parties appeal.