March 23, 2015

PTAB Declines to Limit Claim Based on Disclosure of Only One Embodiment

By Matthew L. Cutler, Principal

The effect of the Broadest Reasonable Interpretation claim construction standard in inter partes review proceedings, forcing a decision that may be different than what could have been expected in district court litigation, has proven tangible in several PTAB decisions. For example, in K-40 Electronics, LLC v. Escort, Inc., IPR2013-00240, the Board construed the challenged claims broadly, despite the fact that the specification only disclosed a single embodiment that may have otherwise dictated a more narrow claim construction. The decision involved US Pat. No. 6,670,905, directed to the combination of a radar detector and location positioning device.  Decision at 3.

Of interest in this proceeding was the Board’s construction of the claim terms “interface connector” and “communication circuitry.”  Patent Owner argued that the two terms should be construed to require a circuit supporting a wired, digital connection – the only embodiment disclosed in the ‘905 specification. More specifically, Patent Owner argued that the claim should be interpreted to exclude wireless interfaces. Id. at 8.

Indeed, the specification did only articulate specific, wired standards: “The interface connector used by the receiver may take other forms than the known USB standard. It may use any computer interface standard (e.g., IEEE 488), or an automotive wiring standard, the J1854, CAN, BH12 and LIN standards, or others.”

Although only specific embodiments of wired connections were discussed, the Board disagreed with Patent Owner and declined to narrow the construction of the limitations-at-issue, focusing on the italicized language above. Specifically, because the specification suggests that “other” connections were contemplated, wireless connections were covered by the claims. Id. at 8.  Further, the Board noted that it will not read additional limitations into a claim unless a special definition is set forth the specification of the patent.  Accordingly, with no special definition present, the Board declined to limit the claim based on the disclosure of only one embodiment in the ‘905 specification. Id. at 9.