Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Co. 590 F.3d 1326 (Fed. Cir. 2010) (GAJARSA, Michel & Friedman)
MAJOR ISSUES: Interference between patent and application; interpretation of claim copied by an applicant from a patent; written description support; PTO Rule 41.200(b) contrary to judicial authority
On copying claims for interference purpose and the construction of copied claims, see Chisum on Patents 10.09[e][ii]; Chisum Patent Law Digest 5223.60
An interference concerned a cardiac defibrillator. U.S. Pat. No. 6,241,751. USPatNo6241751
1. TWO RULES ON INTERPRETING COPIED CLAIMS. The court confirms two rules on interpreting a claim that an applicant copies from a patent into the applicant’s application in order to provoke an interference.
a. LACK OF WRITTEN DESCRIPTION SUPPORT. If the patent owner files a preliminary motion, asserting that the copied claim lacks written description support in the applicant’s specification, then the PTO Board and a court must interpret the copied claim in the light of the specification from which the claim was copied (that is, from the patent). Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009); In re Spina, 975 F.2d 854 (Fed. Cir. 1992).
b. LACK OF NOVELTY OR OBVIOUSNESS. On the other hand, if a copied claim is challenged based on lack of novelty (Section 102) or obviousness over the prior art (Section 103), then the claim is interpreted in the light of the specification in which it appears, not that from which it was copied. Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1997).
2. In this case, the applicant copied the patent owner’s claim, which required a “impedance-compensated defibrillation pulse.”
a. In arguing that the applicant’s claim was unpatentable for lack of written description support, the patent owner contended that (1) the patent owner’s specification required a specific interpretation of the “pulse” phrase, to wit, that there be a tailored voltage and a desired energy level, and (2) the applicant’s specification did not disclose the desired energy level. The court agreed.
b. Ruling to the contrary, the PTO relied on its Rule 41.200(b), which provides: “A claim shall be given its broadest reasonable construction in light of the application or patent in which it appears.” 37 C.F.R. § 41.200(b) (2009) (emphasis added). The Federal Circuit held that the PTO lacked substantive rulemaking authority and its rule could not set aside the contrary authority of the Spina case.