Federal Circuit Summary

Before Newman, Lourie, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: Claim construction was not reasonable where it extended the breadth of the claims beyond what was described in the specification.

Tre Milano requested Inter Partes Review of a patent owned by TF3. The patent at issue describes a hair styling device that automates curling. Tre Milano argued that the claims at issue were anticipated by two references describing hair curling devices. Based on the PTAB’s broad construction of certain claim terms, the PTAB found the claims at issue to be anticipated.

The Federal Circuit reversed the PTAB’s decision and noted that a claim construction under the broadest reasonable interpretation standard is not reasonable where it contradicts the specification. The Federal Circuit found error with the Board’s assertion that the abbreviation “i.e.” in the specification does not denote a limitation. The Federal Circuit reiterated that the usage of “i.e.” “signals an intent to define the word to which it refers.” The Federal Circuit found that the claim construction adopted by the Board impermissibly broadened the claims to read on the prior art and was contrary to the clear description in the specification. The Federal Circuit found that the PTAB’s determination of anticipation was based on an improper enlargement of the claims. The device described and claimed in the patent at issue was in fact different from the hair styling devices in the prior art.