PTAB’s Implicit Claim Construction in Obviousness Analysis Constitutes Claim Construction, Even When Its Decision States It Did Not Construe Claims

In Google LLC v. Ecofactor, Inc., Nos. 2022-1750, 2022-1767 (Fed. Cir. Feb. 7, 2024), the Federal Circuit reversed the Patent Trial and Appeal Board’s (“Board”) construction, vacated the Board’s Final Written Decision, and remanded for further proceedings under the correct construction. 

U.S. Patent No. 8,498,753 relates generally to climate control systems, such as heating and cooling systems. Following institution of the IPR, the Board found Google failed to prove the challenged claims unpatentable and in doing so, stated that claim construction was unnecessary although it interpreted a claim limitation implicitly.  

First, the Federal Circuit held that the Board, in its analysis, implicitly construed a claim limitation, establishing the scope and meaning of the patented subject matter. That the Board stated that it did not construe claims was not dispositive. Next, the Federal Circuit held that the Board’s claim construction did not violate the Administrative Procedure Act because the parties disputed the meaning and scope of the claim term at issue. Thus, Appellants had proper notice of the contested claim construction issues and had the opportunity to be heard. The Federal Circuit concluded that the Board’s construction was erroneous for excluding embodiments disclosed in the specification, which did not contain any restrictive language.