Robertson v. Timmermans, 603 F.3d 1309, CPLRG 0064 (Fed. Cir. 2010) (PLAGER, Linn & Dyk)Robertson05052010
MAJOR ISSUES: claim interpretation; construing claims copied from another patent or application to provoke an interference; written description requirement
COMMENT. Under settled doctrine, a claim is construed not in the abstract but in the light of the supporting specification. When a party copies a claim from another’s specification to provoke an interference and the claim is challenged for lack of written description support or unpatentability over the prior art, the question arises: which specification?
This case reaffirms two prior decisions, which distinguish interpretation for purposes of (1) a written description challenge from (2) a prior art challenge. Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009), and Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, CPLRG 0017 (Fed. Cir. 2010), http://www.chisum.com/cplrg-guides/0017#more-346
For a written description challenge, a copied claim is interpreted “in view of the originating disclosure,” that is, the specification from which the claim was copied. For a challenge based on prior art, a copied claim is interpreted “in view of the host disclosure,” that is, the copier’s own specification.
As this case illustrates, a copied claim may have a specific meaning in its originating disclosure by virtue of that disclosure’s examples and explanations. That meaning may well not be supported by another “alien” disclosure into which the claim is transplanted because the “alien” specification lacks those examples and explanations.
CROSS REFERENCES. On copying claims for interference purposes and the interpretation of copied claims, see Chisum Patent Law Digest 1633, 5223.60; Chisum on Patents 10.09[i].
1. LED TUBES. The interference concerned “light-emitting diode (`LED’) replacement tubes for conventional fluorescent light tubes.” U.S. Pat. No. 6,860,628 USPatNo6860628; U.S. Pat. App. No. 11/085,744.
2. APPLICANTS COPIES CLAIM: “SOLID, RIGID TRANSLUCENT ROD.” The applicant copied the patent’s claims, which required, inter alia, a “solid, rigid translucent rod.”
3. BOARD: APPLICANT’S SPECIFICATION DISCLOSES ONLY HOLLOW RODS; “SOLID” MEANS NOT GASEOUS OR LIQUID. The Board construed “solid” in light of the applicant’s specification. Because that specification did not use the word “solid” and disclosed only hollow tubes, the Board construed solid as meaning a rod of a solid physical material, as opposed to a liquid or gas. Based on that broad construction, the Board found that the applicant’s specification provided written description support.
4. PATENT SPECIFICATION: “SOLID” MEANS FULL OF MATTER AND NOT HOLLOW. Based on the patent specification, the patent owner had argued that a “solid” rod meant “an object that is continuous, full of matter, and not hollow within the general outlines of its shape.”
5. FAILURE TO APPLY RULE: MATERIAL. The applicant argued that the Board’s failure to apply the rule confirmed in Agilent and Philips was not material because both parties relied on dictionary definitions of “solid” rather than on either specification’s written description. However, the Board did not choose between dictionary definitions. Rather, “the Board found it necessary to consult the specification to determine the proper claim construction.” Unfortunately, it consulted the wrong specification.