Discounting Applicant's Specification for Claim Construction Leads to Federal Circuit Reversal

By Brian Dawley

It is well established that terms in a patent claim are to be “given their broadest reasonable interpretation consistent with the specification”[1] and should be read “in light of the specification as it would be interpreted by one of ordinary skill in the art.”[2]  Nevertheless, as patent practitioners are acutely aware, the USPTO is often eager to interpret claims with their broadest reasonable interpretation, without much (if any) regard for the specification.[3]

 

The USPTO’s reluctance to apply an Applicant’s specification when interpreting a claim recently led the Federal Circuit to reverse a decision by the Patent Trial and Appeals Board in In re Imes.[4]  In re Imes concerns U.S. Patent Application No. 09/874,423 (hereinafter, “the ‘423 Application”).  Claim 1 of the ‘423 Application is directed to:

 

an electronic device including a memory for storing digital images, a display for displaying the images, and an input device for receiving a request for communication.  The device includes a housing that stores first and second wireless communication modules.  The first wireless communication module is a cellular communication module, and the second wireless communication module is a “low power high-speed” communication module.[5]

 

The examiner of the ‘423 Application rejected claim 1 under 35 U.S.C. § 103 in view of U.S. Patent No. 6,762,791 to Schuetzle,[6] 6,223,190 to Aihara,[7] and 7,173,651 to Knowles.[8]  Specifically, the element of claim 1 at issue before the Federal Circuit was “the second wireless communication module.”[9]  The Examiner asserted that this element was disclosed by Schuetzle in that Schuetzle discloses a removable memory card.[10]  As summarized by the Federal Circuit:

 

The examiner concluded that removable memory card 35 was “wireless” because to communicate information to computer system 20, it “must be removed from [camera] 30 and inserted into the computer system 20. In other words, no wire is utilized.”  The examiner thus construed “wireless” as including communication along the metal contacts of the removable memory card and the computer system when the memory card is inserted into the computer.[11]

 

The Patent Trial and Appeals Board affirmed the examiner’s position.[12] 

 

However, in its own analysis, the Federal Circuit noted that the specification defines “wireless” as “a communications, monitoring, or control system[] in which electromagnetic or acoustic waves carry a signal through atmospheric space rather than along a wire.”[13]  The Federal Circuit further noted:

 

The ‘423 Application consistently uses the term “wireless” to refer to methods and devices that carry waves through atmospheric space, such as Bluetooth and various cellular protocols.  The metal contacts of a removable memory card do not carry a signal through atmospheric space using electromagnetic or acoustic waves.[14] 

 

Based on this review of the specification, the Federal Circuit concluded, “[R]emovable memory card 35 is not a wireless communication module under the broadest reasonable interpretation of that term in view of the specification.”[15]  Moreover, the Federal Circuit noted that construction of “wireless” is “straightforward.”[16]

 

Nevertheless, patent applicants and patent practitioners should remain hesitant to rely on an interpretation of a claim term based on a reading of the specification.  Although the Federal Circuit once again has shown that it is proper to interpret a claim term in light of the specification, history has demonstrated the reluctance of the USPTO to apply the specification. 

 

Furthermore, appealing to the Federal Circuit is not necessarily the most economical endeavor, when an inexpensive alternative exists—amending the claim to incorporate language from the specification to more clearly define the claim terms.  Even so, if a reason exists why amendment is undesirable, patentees can rely on the holding of In re Imes to further buttress arguments that a claim is properly interpreted in light of the specification.

 

[1] Merck & Co., Inc. v. Teva Pharmaceuticals USA, 347 F.3d 1367, 1371 (Fed. Cir. 2003) (citing Gen. Am. Transp. Corp. v. Cryo-Trans. Inc., 93 F.3d 766, 770 (Fed. Cir. 1996); Slimfold Mfg. Co. v. Kinkead Indus. Inc., 810 F.2d 1113, 1117 (Fed. Cir. 1987)) (emphasis added); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (quoting Merck & Co., 347 F.3d at 1371); MPEP § 2111 (quoting Phillips, 415 F.3d at 1316).

[2] In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)) (emphasis added). 

[3] For example, the MPEP cautions Examiners to avoid reading a particular embodiment from the written description into a claim where the claim is broader than the embodiment.  MPEP § 2111 (quoting Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).  The tension between interpreting a claim in light of the specification while avoiding reading in limitations from the specification into the claims has been recognized in, e.g., Bey & Cotropia, The Unreasonableness of the Patent Office’s “Broadest Reasonable Interpretation” Standard, 37 AIPLA Quarterly Journal 285, 300 (2009), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1434918.

[5] Id., slip op. at 2.

[6] Filed Feb. 16, 1999 (hereinafter, “Schuetzle”).

[7] Filed Mar. 13, 1998 (hereinafter, “Aihara”).

[8] Filed June 2, 1999 (hereinafter, “Knowles”).

[9] In re Imes, slip op. at 2.

[10] Id., slip op. at 3.

[11] Id.

[12] Id.

[13] Id., slip op. at 4 (quoting the ‘423 application, p. 46 l. 26–p. 47, l. 1).

[14] Id. 

[15] Id. 

[16] Id.