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March 29, 2015
Is It Time to Take a New Look at Appellate Review of PTO Claim Construction?
Addressing again the issue of whether to construe a claim term according to 35 U.S.C. § 112, ¶ 6 when that term does not include the magic “means for” language, the U.S. Court of Appeals for the Federal Circuit reversed the U.S. Patent and Trademark Board of Patent Appeals and Interferences (the Board) construction of the term “height adjustment mechanism,” concluding the term was not a means plus function (M+F) claim element. Perhaps more interesting is Judge Plager and Judge Newman’s call for en banc review of what standard of review should be applied to the claims construction by the PTO. Flo Healthcare Solutions v. David J. Kappos, and Rioux Vision, Case No. 11-1476 (Fed. Cir., Oct. 23, 2012) (Plager, J.) (Plager, J., additional views) (Newman, J., additional views).
After Flo Healthcare sued Rioux Vision for infringing its patent directed to a mobile computer workstation intended for medical care environments, Rioux requested inter partes reexamination of the patent and the parties agreed to stay the litigation during the reexamination process. During reexamination, the patent examiner rejected the claims based on prior art. At the center of the patentability dispute was whether the claim element “a height adjustment mechanism for altering the height of the horizontal tray” was a M+F element subject to § 112, ¶ 6 (as urged by Flo Healthcare). The examiner disagreed. At the conclusion of the reexamination proceeding, Flo appealed to the Board.
The Board reversed the patent examiner and agreed with Flo Healthcare that § 112, ¶ 6 should apply to the disputed claim term. The Board reasoned that “height adjustment mechanism” does not recite sufficient structure for performing the recited functions. However, the Board’s determination on that point did not affect the outcome of the reexamination, as the claims remained rejected. Flo appealed to the Federal Circuit.
The Federal Circuit first reviewed the line of cases that discussed the rebuttable presumption regarding when § 112, ¶ 6 applies and when it does not; i.e., use of the word “means” creates a rebuttable presumption that the drafter intended to invoke § 112, ¶ 6 while failure to use the word “means” creates a rebuttable presumption that the drafter did not intend to do so.
In rebutting the presumption, when a claim term recites “means” plus a function but then recites sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the term is not construed as a M+F element even if it uses the word “means.” Conversely, when a claim term does not recite the word “means,” the presumption that it is not subject to § 112, ¶ 6 may be overcome if it is shown that the claim term fails to recite sufficiently definite structure or else recites a function without sufficient structure for performing that function. The Court reiterated that these presumptions are strong and not readily overcome.
In the present case, the claim term in issue did not recite the word “means.” Therefore, the Court explained that the starting presumption is that § 112, ¶ 6 does not apply. The Federal Circuit noted that the written description in the subject patent confirmed that the term “height adjustment mechanism” indicates a structure and that this term “mechanism” was not used as a substitute for the term “means.” Although the Court reversed the Board on this point, it concluded that the Board still reached the correct result on the issues of invalidity.
Both Judge Plager and Judge Newman submitted additional views.
Judge Plager lamented the fact that the opinion failed to settle the question of what standard of review the Court should apply to claim construction decisions of the Board. One line of cases suggests that a “reasonableness” standard should apply thus giving some deference to the Board’s decision. Another line of cases suggests that no deference should be given to the Board’s decision on the issue should be considered de novo. After reviewing the jurisprudence Plager stated “[w]hichever way this court’s review rule should be cast, and for whatever reasons, it is perhaps time that the court definitively decide en banc on an agreed review standard, one that provides clear direction to the PTO and the inventor community.”
Judge Newman, harkening back to the policy reasons for the creation of the Federal Circuit, stressed that the Court’s job was to ensure uniformity in the application of the patent law. Judge Newman, noting that the present case was illustrative of a situation where "the same issue can be finally adjudicated to different appellate outcomes, depending upon the tribunal from which it came," suggested that the “broadest reasonable interpretation” rule required “remedial attention, for the resulting uncertainty is no less pernicious than the intercircuit conflicts of thirty years past.”
Judge Newman explained that no deference ought to be given to the Board’s claim construction analysis because the “broadest reasonable interpretation” is an examination tool used to search the prior art and to expedite prosecution. In her view, it is wrong to turn this examination tool into something entitled to appellate deference.
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