In a patent interference involving the adequacy of an application’s written description, the U.S. Court of Appeals for the Federal Circuit reminded both the district court and the Board of Patent Appeals and Interferences (BPAI) that judicial precedent always trumps the U.S. Patent and Trademark Office’s (USPTO) procedural rules. Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Co., Case No. 209-1241 (Fed. Cir., Jan. 5, 2010) (Gajarsa, J.).
In the BPAI interference, Cardiac Science claimed priority over Philips’ issued patent, which discloses a cardiac defibrillator that delivers electrical shocks to a patient’s heart during ventricular fibrillation. To initiate the interference, Cardiac Science put into its patent application 37 claims from the Philips patent. In an effort to terminate the interference proceedings, Philips filed several preliminary motions with the BPAI. Several of those motions were later considered by both the district court and then the Federal Circuit.
Foremost, to challenge the adequacy of the Cardiac Science application’s written description, Philips requested that the BPAI construe a key claim term in light of the written description of the Philips patent. Citing Manual of Patent Examining Procedure (MPEP) § 41.200(b), the BPAI held that it was unnecessary to consider the Philips patent when construing the claim in Cardiac’s application. Likewise, in a separate motion, Philips requested that upon a broad construction of the relevant term, the majority of claims in the Cardiac Science application should be found anticipated or at least obvious based on third-party prior art. That contingent motion was denied because the BPAI did not construe the term. Thus, the BPAI found in favor of the Cardiac Science application for priority and cancelled most claims in the Philips patent.
Challenging the BPAI’s priority decision, Philips promptly filed suit under 35 U.S.C. § 146 in the U.S. District Court for the Western District of Washington. At an early hearing, Philips asked the district court to overturn the BPAI’s rulings on Philips’ preliminary motions regarding validity and claim construction. Philips also requested a claim construction hearing at the district court and stated that if the hearing was denied, Philips would re-litigate the preliminary motions in the district court so that new, live evidence could be considered. The district court denied Philips’ request for a claim construction hearing and affirmed all of the BPAI’s decisions because the “reasons for denying or dismissing the motion were grounded in the application of the [BPAI’s] own procedures and regulations.” Then, the district court sua sponte dismissed the complaint with prejudice.
On appeal, the Federal Circuit first ruled that the district court improperly granted sua sponte summary judgment based on the applicable U.S. Court of Appeals for the Ninth Circuit law, which was applied because the issue was not unique to patent law and also because there still existed genuine issues of material fact as to the written description and anticipation. Next, the Federal Circuit held that the district court improperly affirmed the BPAI’s application of MPEP § 41.200(b) when it denied Philips’ challenge to the written description in the Cardiac Science patent application. Existing Federal Circuit authority was clear that § 41.200(b) does not apply to an interference proceeding when one party challenges another’s written description. Thus, the sufficiency of the written description in the Cardiac Science application should have been considered using the meaning of the pertinent claim language of the senior party’s patent (i.e., the Philips patent). According to the Court, the district court should therefore have undertaken claim construction of the key claim term. Moreover, the district court should have addressed Philips’ validity challenges as to whether or not the key term was construed because, in an anticipation or obviousness challenge, the court should have interpreted the claim in light of the specification in which is appears. Therefore, the Federal Circuit reversed and remanded the case back to the district court.