Anticipation is a fact specific inquiry that requires the Federal Circuit to deferentially review factual findings made by the Patent Trial and Appeal Board (PTAB) in inter partes reviews (IPRs). Because of the factual nature of the analysis, the Federal Circuit typically does not evaluate prior art in the first instance to determine whether or not a claim element is disclosed. In a rare exception to this general rule, in Homeland Housewares, LLC v. Whirlpool Corporation1 the Federal Circuit construed a claim term that the PTAB determined did not need to be construed and applied its new construction to the prior art to determine that a claim was anticipated. The Court’s opinion highlights the importance of requesting explicit constructions of disputed terms in IPRs.
The Board failed to explicitly construe a disputed term
Just as in district court litigation, the PTAB must construe a claim term when the parties dispute the meaning of the term.2 In Homeland Housewares, the patented technology related to a blender that automatically changes speeds to allow ingredients to settle around the blades.3 Claim 1 recited the elements of “a deceleration phase, where the speed of the cutter assembly is reduced from the operating speed to a predetermined settling speed indicative of the items in the container having settled around the cutter assembly, which is less than the operating speed and greater than zero.”4 In the IPR the parties offered competing constructions of the “settling speed” term. For example, the Patent Owner argued that “‘a predetermined settling speed’ means a speed, greater than zero, that indicates that items have settled around the cutter assembly.”5 The Petitioner argued for a broader interpretation that included “any comparative low speed less than the operating speed.”6
The Board, however, did “not adopt any explicit construction of the term for [its] Final Written Decision,” even though the parties disagreed as to claim construction.7 The Federal Circuit held that the PTAB’s failure to construe the term was legal error. Citing its opinion in O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008), the Federal Circuit held, just as in district court litigation, that “[w]hen the parties raise an actual dispute regarding the proper scope of … claims,” the PTAB must resolve such a dispute by construing the claim.8
The Federal Circuit adopted a construction not proposed by any party
Finding error in the PTAB’s failure to construe the “settling speed” term, the Federal Circuit proceeded to construe the term. The Federal Circuit adopted a construction that was different from the parties’ proposals.
The Federal Circuit began by comparing the parties constructions and rejecting both proposals. The Federal Circuit rejected the Patent Owner’s construction that “‘a predetermined settling speed’ means a speed, greater than zero, that indicates that items have settled around the cutter assembly;”9 because the Patent Owner conceded that such a construction would require empirical testing to determine a settling speed in a particular context, “[b]ecause so many factors affect the settling speed.”10 The majority reasoned that the claim requires that the settling speed be “predetermined,” not empirically determined on a case-by-case basis.11 The Federal Circuit rejected the Petitioner’s broader interpretation that included “any comparative low speed less than the operating speed”12 because “not every lowering in speed will cause settling. By way of example, as the appellee points out, if the operating speed is 6000 rpm and it was lowered to 5900 rpm, the contents will not necessarily settle.”13
Having rejected both parties’ proposals, the majority determined the broadest reasonable interpretation of the term “settling speed.” The Federal Circuit explained that the role of the Court is to reach the correct construction, not to merely choose between alternatives proffered by the parties.14 After reviewing the specification, the majority held that “[t]he broadest reasonable construction of ‘a predetermined settling speed’ is a speed that is slower than the operating speed and permits settling of the blender contents.”15 The Court explained that this construction “is consistent with the ordinary and customary meaning of the words of the claim, as discussed above, and with the specification.”
The Federal Circuit determined in the first instance that the prior art anticipates the claims
Having reached a new construction, the Federal Circuit proceeded to evaluate whether the prior art anticipated the challenged claims. The dispositive question was whether a figure of the prior art illustrating an “automated blending routine” disclosed the “settling speed” limitation.16 The “automated blending routine” referred to both “low” and “high” blending speeds.17 Although the PTAB did not construe the “settling speed” term, the Board relied on expert testimony that the reference to “low” speeds failed to disclose a “settling speed.”18 The Federal Circuit disagreed, finding in the first instance that the prior art disclosed the “settling speed” term under the Federal Circuit’s construction.19
The Federal Circuit reached the opposite conclusion., finding that the prior art “teaches two relevant characteristics of ‘low’ speeds.” First, the majority noted that “the term ‘low speeds’ appears only once in the specification, where the background teaches that ‘[p]ulsing the motor on/off or at high and then low speeds permits the material being blended to fall back to the region of the cutting knives thereby improving the blending or mixing of the material,’” which is a settling speed.20 Second, the specification used the term “low” or “lower” in four other places to clarify that “a ‘low’ speed is discretely and significantly different from a ‘high’ speed.”21 The Federal Circuit found that the term “low” was used consistently throughout the specification to refer to a “settling speed” and therefore concluded that the prior art therefore anticipated the challenged claim.22
Judge Newman dissented, arguing that the majority improperly construed the claimed subject matter and failed to apply to the appropriate standard of review. Judge Newman agreed with the PTAB that that the “settling speed” term did not require construction, reasoning that that the majority failed to identify any errors in the Board’s analysis resulting from its treatment of the term.23 Judge Newman further criticized the majority’s decision that the prior art anticipates, stating that “[t]he panel majority omits the specific limitations of the claim, and restates the ’688 invention in generalized terms that do not distinguish it from [the prior art].”24 Judge Newman noted that the only discussion of automated pulsing appeared in the background of the prior art reference and actually described a different prior art reference, not the allegedly anticipatory embodiment that the majority relied on.25 Judge Newman would have given greater deference to the PTAB’s findings, and upheld the determination that the challenged claims were not anticipated.26
The Federal Circuit’s decision highlights the importance of requesting constructions of disputed terms in IPRs. Because the Board is required to construe disputed terms, failing to propose a construction raises the risk that the other party will dispute the meaning of a term, potentially leading to an unexpected construction by the Board.