July 13, 2018

Unreasonably Broad Construction Unlimited by the Specification, Resulted in Incorrect Finding of Anticipation

By Bryan K. Wheelock, Principal

In TF3 Limited v. Tre Milano, LLC, [2016-2285] (July 13, 2018), the Federal Circuit reversed the PTAB’s decision in IPR2015-00649 that the claims in U.S. Patent No. 8,651,118 on a hair styling device were anticipated, holding that, on the correct claim construction, the claims are not anticipated.

The Federal Circuit said that the Board held that two references each show the same device as claimed in the ’118 Patent, rendering the claims invalid for anticipation.  However, as is apparent, the devices are not the same.  The Federal Circuit said that anticipation was decided on a flawed analysis, whereby the ’118 Patent claims were construed to have a breadth beyond the scope supported by the device described in the ’118 Patent, the Board then holding that the unduly broad ’118 Patent claims read on the two different prior devices and thus are anticipated.

The Federal Circuit said that the Board declined to construe “the length of hair can pass through the secondary opening,” as set forth in the specification, instead ruling that in accordance with the broadest reasonable interpretation, “claim 1 does not require that the length of hair is allowed to slide along the elongate member towards and subsequently off its free end.”

The Federal Circuit found that the Board misconstrued the use of “i.e.” in the specification, explaining that the usage “i.e.” (“id est” or “that is”), “signals an intent to define the word to which it refers.” The Federal Circuit said that the ’118 Patent describes the device as improving curl retention by the structure that “permits a formed curl to be slid off the end of the elongate member without being uncurled,” and neither of the allegedly anticipating references has such a structure.

The Federal Circuit quoted itself:

The claims, of course, do not stand alone. Rather, they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification, of which they are a part.

The Federal Circuit concluded that it is not reasonable to read the claims more broadly than the description in the specification, thereby broadening the claims to read on the prior art over which the patentee asserts improvement.

The Federal Circuit also noted that the Board construed “free end” to mean “an end of the elongate member that is unsupported when the movable abutment is in the open position,” because, given their broadest interpretation, the ’118 Patent claims do not require that the movable abutment operates as described in the specification.  Thus, the Federal Circuit observed, the Board construed the claims as “unlimited by the specification.”

The Federal Circuit observed:

Claims are construed with reference to the specification and prosecution history, for these are the resources by which persons in the field of the invention understand what has been invented.

The Federal Circuit found that the Board’s construction was contrary to the specification, and concluded that The ’118 Patent claims, construed in light of the specification, do not read on the prior art and are not anticipated by the prior art.