Addressing claim construction issues in the context of an ex parte reexamination, the US Court of Appeals for the Federal Circuit rejected the Patent Trial and Appeal Board’s (PTAB’s or Board’s) construction as unreasonable for failing to account for the disclosure of the specification, reversed the Board’s anticipation rejections and remanded the case with respect to certain obviousness rejections. In re: Man Mach. Interface Techs. LLC, Case No. 15-1562 (Fed. Cir., Apr. 19, 2016) (Stoll, J).
Man Machine owns a patent directed to a television or computer remote control with a multi-function thumb switch. A third party requested ex parte reexamination of the patent. In the ensuing reexamination, the examiner rejected the claims as both anticipated and obvious, relying on prior art directed to, among other things, a desktop mouse. The examiner construed the claim term “adapted to be held by the human hand” to include various “forms of grasp or grasping by a user’s hand,” such as the grasping of a desktop mouse. Further, the examiner construed the claim term “thumb switch” to “merely require that a switch . . . be capable of being enabled/activated by a thumb . . . not preclude[ing] another digit, i.e., index finger.” After the Board affirmed the examiner’s broad claim construction and rejections, Man Machine appealed.
The Federal Circuit concluded that although the claims should be given their broadest reasonable interpretation during a reexamination, such interpretation must still be reasonable in light of the claims and specification. In this case, the term “adapted to” narrowed the claim scope to a device made to be held in the human hand and having a switch designed for activation by a human thumb. The specification clearly describes a remote that is elongated and rounded so as to be held in a hand with the fingers positioned such that the “thumb switch” is operated by the thumb. The specification also repeatedly identifies the thumb switch as being designed for and operated by the thumb because of the amount of pressure it can provide. Moreover, the specification explicitly distinguishes the claimed remote from a desktop mouse and touts the benefits of the claimed remote for its ease of use. The Federal Circuit explained that the broadest reasonable interpretation cannot include that which is expressly disclaimed in the specification. Therefore, the Federal Circuit concluded that the claimed remote control “adapted to be held by a human hand” did not include a desktop mouse, and that the claimed “thumb switch” must be made or designed for a human thumb.
Under this narrower claim construction, the desktop mouse prior art was now inapposite, and therefore the Federal Circuit reversed the Board’s anticipation rejection. However, the Federal Circuit affirmed the obviousness rejections for a number of claims, where one prior art reference disclosed a remote control held by a hand and a second prior art reference disclosed a switch adapted for use by a thumb. The remaining obviousness rejections were vacated and remanded because neither party introduced arguments beyond challenging the claim construction on appeal.
Practice Note: The Supreme Court of the United States in Cuozzo Speed Technologies v. Lee (IP Update, Vol. 19, No. 1) (discussing the certiorari petition) will soon address the general question of the appropriate claim construction standard to be applied by the Board during post-grant proceedings under the America Invents Act. A decision is expected by the end of June 2016.