When a party challenges written description support in an interference proceeding, the originating disclosure should be used for claim construction; whereas when a claim’s validity is challenged in an interference proceeding, the claim must be interpreted in light of the specification in which it appears.
Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Co., No. 2009-1241 (Fed. Cir. Jan. 5, 2010)
The applicant provoked an interference with the patentee by copying certain claims from the patentee’s earlier patent into its application. The Board of Patent Appeals and Interferences (“BPAI”) awarded priority to the applicant and denied the patentee’s motions to terminate the proceeding as to written description, anticipation, and obviousness. The patentee appealed to the district court, which denied the patentee’s motion for a claim construction hearing, thereby failing to construe any disputed terms, and dismissed the case sua sponte, affirming the BPAI’s decisions.
On appeal, the Federal Circuit reversed and remanded, holding that the district court improperly granted sua sponte summary judgment. In the Ninth Circuit, a district court can only enter summary judgment if the losing party has a full and fair opportunity to present arguments and if both parties have no genuine dispute as to a material fact. In this case, the BPAI and the district court satisfied neither prong. The patentee was denied a chance to present additional priority evidence and the parties disputed issues of material fact as to written description and anticipation.
The Federal Circuit also held that the district court improperly dismissed the patentee’s claims that the application was unpatentable for lack of written description under § 112, ¶1 and that several claims were invalid as anticipated or obvious. Quoting Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009), the court held that “when a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language.” In contrast, when a validity challenge under § 102 or § 103 is at issue, a claim is interpreted “in light of the specification in which it appears.” On remand, the district court was asked to construe the claim in light of the patent’s written description and then determine whether the application’s written description satisfied § 112, ¶1.
The Federal Circuit further stated that some of the errors of the district court and BPAI stemmed from reliance on improper PTO regulations which disregarded judicial precedent. “The PTO lacks substantive rulemaking authority” and “[j]udicial precedent is as binding on administrative agencies as are statutes.”
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