By Scott A. McKeown
| October 24, 2012

InconsistencyCourt Troubled by Own Inconsistent Precedent


As explained very recently by Director Kappos, the USPTO has a well established practice of applying a broadest reasonable claim interpretation (BRI) in proceedings before the USPTO. For this reason, Director Kappos explained that although the AIA was silent on the type of claim analysis to be applied in the new post grant proceedings of the Patent Trial & Appeal Board (PTAB), BRI was deemed necessary for, inter alia, administrative consistency.


Yesterday, in Flo Healthcare Solutions, LLC. v. Kappos, the CAFC advanced a similar consistency theory in questioning whether or not USPTO claim constructions should be reviewed under a de novo standard, as is the court's routine practice. Or, whether the USPTO's constructions should be entitled to a different, "reasonableness" analysis as enunciated in some of the court's more recent precedent. (decision here)


At issue in the reexamination appeal is the construction of the claim terminology "height adjustment mechanism" as it applies to a mechanical assembly used in medical workstations. During the inter partes patent reexamination the patentee took the position that the language invoked 35 U.S.C. § 112, 6th paragraph (i.e., means plus function) and required certain specific structure of the specification, namely a length adjustable vertical beam; the examiner disagreed. On appeal to the Board, it was determined that while the claims did invoke the statute, the critical structure of the specification argued by the patentee was not clearly linked to the language "height adjustment mechanism." The Board's affirmance of the examiner was then appealed to the CAFC.


In reviewing the issue, the CAFC affirmed the Board, but, on different grounds. Specifically, the Court pointed out that as the claims did not recite "means for" they did not enjoy the presumption that 35 U.S.C. § 112, 6th paragraph applied. In fact, the Court explained that the lack of these words presents the contrary assumption that is difficult to overcome. Moreover, the Court explained that the language "height adjustment vertical beam" itself implied structure. In support of this conclusion the Court explained that the specification itself used the term to designate an entire class of structures.


While one might argue that the designation of a "class of structures" is the entire purpose behind means-plus-function language, here, the court's point was that the label "height adjustment mechanism" was used in the specification as a term of art, not as a short hand claim notation as is the case for 112, 6th language.


The decision is rather unremarkable in its holding, yet, the "additional view" opinions of Judges Plager and Newman emphasize a growing frustration in the precedent relative to the level of deference to be accorded USPTO claim constructions.


Judge Plager invited en banc review of the issues, explaining that the precedent presented confusing guidance as to whether the Court's review should be deferential to the USPTO's BRI determination (abuse of discretion standard), or whether de novo review was more appropriate.


Judge Newman advocated for the later, stating:



The “broadest reasonable interpretation” applies to the initial consideration of patentability, not to the final decision. . . .

Although the internal procedures of administrative and litigating tribunals are historically different, for questions of law the decision must be correct. For Federal Circuit review of patentability the criterion is correctness, whether initially decided in the district courts, the Patent and Trademark Office, the International Trade Commission, or the Court of Federal Claims. . . . .These procedures have become beclouded, as in In re Morris, 127 F.3d 1048 (Fed. Cir. 1997), where this court stated the question as whether the PTO's interpretation of disputed claim language was “reasonable.” Id. at 1055. Still, this court decided whether Morris was entitled to the requested claim scope as a matter of objective law, on de novo review of the PTO’s decision.

The same rules apply on review of reexamination as on initial examination, as the PTO observed with respect to the Flo Healthcare claims herein. . . .

In the reexamination appeal now before us, the PTO states in its brief that “During reexamination – as in ex parte prosecution – claims are given their broadest reasonable interpretation consistent with the specification . ..” That is correct. However, the PTO then advises: “Thus, this Court reviews the USPTO’s interpretation of disputed claim language to determine whether it is ‘reasonable’ in light of the specification.” That is incorrect. It is incorrect to convert a search and examination expedient into a requirement of appellate deference.

(emphasis added)

With the vast majority of the new PTAB trial proceedings headed their way on appeal (as many as 200 per year once the current elevated filing rates subside), the CAFC is wise to invite resolution of this matter in the near term.
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