In anticipation of the Supreme Court’s decision in Cuozzo Speed Technologies v. Lee, which will determine the standard for claim construction during inter partes review before the Patent Trial and Appeal Board (PTAB), on April 19, 2016, the Federal Circuit reaffirmed that claim construction under the current broadest reasonable interpretation (BRI) standard “cannot be divorced from the specification and the record evidence.”
In the instant case, the court found that PTAB had construed two claim limitations, “adapted to” and “thumb switch,” unreasonably broad. The court rejected PTAB’s constructions, because they allowed the claims to cover disclaimed configurations, and ruled that “the proper BRI construction is not just the broadest construction, but rather the broadest reasonable construction in light of the specification.” The court found PTAB’s constructions allowed the claims, which were directed to remote control technology, to cover desktop mouse technology and to cover a button that could be engaged simply by a thumb, rather than a button specifically designed for it. However, the court also found that specification of the challenged patent explicitly distinguishes prior art that is directed to these configurations. The court reasoned that the “broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification.” The court then construed the limitations to exclude the disclaimed configurations. Based on these narrower constructions, the court found that asserted prior art did not anticipate the claims, but that several claims were still invalid as obvious over that same prior art.
This case highlights the similarities between the claim construction standards implemented by district courts and by PTAB, both of which require the claims and specification to be a touchstone for claim construction.
In Re: Man Machine Interface Tech. LLC, 2015-1562 (Fed. Cir. Apr. 19, 2016).
[Stoll (opinion), Lourie, O’Malley].