By Bryan K. Wheelock, Principal
In In re Varma, [2015-1502, -1667] (March 10, 2016) the Federal Circuit reversed the PTAB’s cancellation of claims of U.S. Patent No. 6,349,291 in two inter partes reexamination proceedings. in one of the proceedings, the construction of ““a statistical analysis request corresponding to two or more selected investments” was at issue. The Board held that this phrases embraces a request that calls for a statistical analysis of a single investment. The Federal Circuit noted that the Board relied on the claims’ use of “comprising” as the transitional term, but found that this did not support the Board’s construction. The Federal Circuit said that although the transitional term “comprising” indicates that the claim is open-ended, the term does not render each limitation or phrase within the claim open-ended. The Federal Circuit explained:
“Comprising” means that the claim can be met by a system that contains features over and above those specifically required by the claim element, but only if the system still satisfies the specific claim-element requirements: the claim does not cover systems whose unclaimed features make the claim elements no longer satisfied.
The Federal Circuit also noted that the Board cited the indefinite article “a” before “statistical analysis request” to support its interpretation. However the Federal Circuit said that while “a” sometimes is non-restrictive as to number, permitting the presence of more than one of the objects following that indefinite article, context matters even as to whether the word has that meaning. The Federal Circuit said the question is not whether there can be more than one request in a claim-covered system: there can. Rather, the question was whether “a” can serve to negate what is required by the language following “a”: a “request” (a singular term) that “correspond[s]” to “two or more selected investments.” The Federal Circuti said that it cannot. The Federal Circuit observed “For a dog owner to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.
The Federal Circuit held that the Board applied an unreasonably broad interpretation, and remanded the applications to be reconsidered in light of the proper claim construction.