By Bryan K. Wheelock, Principal
In In re: Power Integrations, Inc., [2017-1304] (March 19, 2018), the Federal Circuit reversed the decision on remand that claims 1, 17, 18, and 19 of U.S. Patent No. 6,249,876 were anticipated, because the Board relied upon an unreasonably broad claim construction. The patent describes a technique for reducing electromagnetic interference (“EMI”) noise “by jittering the switching frequency of a switched mode power supply.”
The Board affirmed the examiner’s rejection of the claims as anticipated in light of its construction of the term “coupled” that was broad enough to encompass an EPROM between the counter and the digital to analog converter. The Federal Circuit noted that the patent had been previously litigated, and the claims were found to be not obvious or anticipated. When the case was previously before it, the Federal Circuit remanded, finding that the Board had an obligation to evaluate the construction from the litigation to determine whether it was consistent with the broadest reasonable construction of the term.
The Federal Circuit noted that, on remand, the Board acknowledged that the Federal Circuit’s “concern” that its original decision had failed to assess whether the district court’s interpretation of the term “coupled” was consistent with the broadest reasonable construction, but the Board concluded that such a comparison was “unwarranted.” The Federal Circuit said that the Board adhered to a generalist dictionary definition of the term “coupled,” and could glean no substantial guidance from either the context of the claim itself or the specification.
The Federal Circuit said that even under the broadest reasonable construction rubric the Board must always consider the claims in light of the specification and teachings in the underlying patent, and that there was no reason why this construction could not coincide with that of a court in litigation. The Federal Circuit added that while the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description. The Federal Circuit found that the board’s claim construction here was unreasonably broad and improperly omitted any consideration of the disclosure in the specification.
The Federal Circuit explained under the board’s overly expansive view of the term “coupled,” every element anywhere in the same circuit is potentially “coupled” to every other element in that circuit, no matter how far apart they are, how many intervening components are between them, or whether they are connected in series or in parallel.
The Federal Circuit pointed out that the correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.
The Federal Circuit noted that the board has had two opportunities to come up with a sustainable interpretation that differs from the one that survived litigation and has failed, and concluded there was not one. The Federal Circuit thus reversed the Board without remand.