English
CAFC Applies The Wrong Claim Interpretation Standard in Patent Reexamination
In re Suitco Surface, Inc. (Fed. Cir. 2010)
Yesterday, the CAFC issued a decision in ex parte reexamination 90/007,015 appeal (U.S. Patent 4,944,514). The decision (In re Suitco Surface Inc) is interesting in that the broadest reasonable interpretation of the USPTO was reversed as clearly unreasonable, yet that is the least interesting aspect of the case. In deciding the case, both the BPAI and CAFC applied the wrong standard altogether.
As background, the patent relates to a flooring surface for use on athletic courts, namely bowling alleys and shuffleboard. The key term in dispute being “material for finishing the top surface.” The Patent Holder insisted that the material for finishing the top surface must be defined as the uppermost surface. The USPTO countered that the broadest reasonable interpretation did not require an uppermost surface, but simply the finishing of a general floor surface (such as the lower layer of a laminate type floor). The USPTO reasoned that the term “comprising” is open ended and additional floor layers were possible.
In reversing the BPAI, the CAFC noted that:
“[t]he PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (”The claims of a patent are always to be read or interpreted in light of its specifications.”). In that vein, the express language of the claim and the specification require the finishing material to be the top and final layer . . .”
The CAFC determined that claim 1 was unreasonably interpreted based on the USPTO claim construction of “material for finishing a top surface.” However, the CAFC affirmed the rejection of claims 4 and 6 based on a broadest reasonable claim construction of the terminology “uniform flexible film.”
While the CAFC’s emphasis on specification context for reexamination is certainly noteworthy, lost in the appeal to both the BPAI and CAFC is that the broadest reasonable interpretation standard is not applicable to the Suitco Patent. This is because the claims of the Suitco Patent expired in 2007. As we pointed out a few weeks back, and as recently decided by an expanded panel of the BPAI, expired patents are interpreted based upon the standard established by Ex parte Papst-Motoren, 1 USPQ2d 1655 (BPAI 1986). Papst-Motoren requires that expired claims should be construed, if possible, to sustain their validity” and that the broadest reasonable interpretation was not to be used.
In the case of the Suitco Patent, it appears that while on appeal to the BPAI, the patent expired (2007). It does not appear that the Patent Holder ever briefed the issue at the BPAI or CAFC level. This oversight did not impact the reversal of claim 1, however, the more patent friendly Papst-Motoren standard may have made a difference for claims 4 and 6. It is unclear whether or not a rehearing would be permitted by the CAFC based upon the Patent Holder’s failure to raise the issue.
Going forward, the USPTO will now take up the case again, some 3 years after expiration. Assuming a 103 rejection of the reversed claims is plausible with the previously applied 102 art, the reexamination may continue.
Continued reexamination, and another BPAI appeal will certainly span another 3+ years. The result of another 3 years of reexamination and BPAI/CAFC appeal processing will ensure that the Suitco Patent is subject to reexamination proceedings 6 years beyond expiration. Thus, the USPTO will be expending resources for the next three years on a patent that, at the 6 year mark, is no longer enforceable (35 USC 286). At the 6 year mark, USPTO reexamination jurisdiction ends.
Interestingly, Suitco has an infringement action against 3M in an Iowa district court. The case is stayed pending reexamination. With the case stayed, and any continuing reexamination doomed to be cut off prematurely it seems to me that the infringement will escape review by the court if the stay is continued (see our earlier post on appealing stays pending reexamination) One is left to wonder when Suitco might get around to pointing all this out to the judge, or appeal the stay to the CAFC. Likewise, Suitco may seek rehearing in an attempt to revive claims 4 and 6 based on the mistake in claim interpretation standards.
Stay tuned.
I don’t see how the claim interpretation test for expired patents in reexamination could change the outcome in this particular case, since the CAFC is requiring a narrower claim interpretation anyway?
Also, at what point in the reexamination did the patent expire? If it was not until after the same PTO rejection and after opportunity for claim amendements, why should a different claim interpretation apply since it would lack the expressed basis for this claim interpretation switching theory?
Also, as I noted before, I do not believe the CAFC has ever expressly blessed this Board claim interpretation switching theory.
Also, in other cases the CAFC in recent years rejected the old concept of intepreting claims more narrowly just to “save” them from prior art invalidity attacks.
Paul,
The CAFC found a narrower meaning of the claim term than the PTO for claim 1, but not claim 4. The different standard would at least give the patent holder a better shot at disputing the rejection of claim 4.
The patent appears to have expired while on appeal to the BPAI, after reexamination started, just like in re Tam. I’m not sure I follow the rest of your question.
The Patent Holder failed to brief the issue at both the BPAI and CAFC, that is why it wasn’t discussed. Nether court picked up on the issue.
It seems to me what was at issue was the Examiner’s final rejection, which was made before expiration of the patent. Also, is not a material that contains more than the two layers also a “finishing material” for the “top surface of the floor”? Claim does not say that the clear layer must be the top layer of the “finishing material,” as court seemed to think.
Jay,
The final rejection was made in 2006, the patent expired in 2007. Once the patent expires the claim interpretation changes, the Board reviews the case de novo (Board decision was after expiration).
The CAFC found that in the context of the specification (a surface for bowling lanes, shuffleboard, etc) it is unreasonable to interpret the “finishing” aspect of the claim as something other than the top surface.
The way I understand this claim, the “finishing material” comprises at least one clear layer and an adhesive layer on “top of the surface of the floor”.
The “finishing material” of the prior art, in the embodiment where it is down to the last adhesive layer/clear layer combination, has an adhesive layer/clear layer/adhesive layer on top of a hospital or semiconductor clean room floor. (These are ultra-thin layers in the mils range, so “pad” seems to be a misonomer.)
There is nothing in the claim about bowling alleys or a clear layer being the top layer of the “finishing material”, unless of course the spec explicitly indicated as such.
Jay,
I think the CAFC was emphasizing the context of the specification, one can’t interpret a claim without reading the specification. Claims are not given a broadest linguistically possible interpretation, but a broadest REASONABLE interpretation in view of the specification. The specification refers to a “finish topcoat” for atheltic courts.
The claim appears directed to an invention relating to an improved athletic surface, it seems unreasonable to me to identify art having an intermediate surface as somehow meeting the requirements of the claim in a 102 sense.