In re Nordt Development Co., Case No. 2017-1445 (Fed. Cir. February 8, 2018)

In In re Nordt Development Co., the Federal Circuit held that the claim term "injection molded" was a structural limitation that should have been given patentable weight in a product claim to a knee brace because the term connoted structure based on the applicant's specification and the plain claim language.

In holding that the term was a structural limitation, the Federal Circuit noted that the Patent Trial and Appeal Board ("PTAB") erroneously presumed "injection molded" to be a process limitation in a product-by process claim and erroneously required Applicant to rebut the presumption by explaining the specific structure of the limitation. Thus, the PTAB erred by not giving the claim term patentable weight, despite the applicant being unable to explain the specific structure connoted by the term.

In determining whether a claim term is patentably distinct, the Federal Circuit held that the PTAB should (1) determine whether the term is a process limitation or a structural limitation, and then (2) determine the precise meaning of the term. The Federal Circuit noted that the PTAB originally conflated these two inquiries.

In determining inquiry (1), the Federal Circuit cited 3M Innovative Props. Co. v. Avery Dennison Corp.: “[w]ords of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise." Accordingly, here, the Federal Circuit held that the claim term "injection molded" was a structural limitation because the applicant's specification suggested the term connoted an "integral structure" by describing injection mold components that are "integrally constructed" and "integrally formed," and because the applicant repeatedly represented that the term conveyed structure. Thus, the Federal Circuit held the claim term must be given patentable weight as a structural limitation in a product claim.

Following, the Federal Circuit vacated the claim rejection and remanded to the PTAB to resolve inquiry (2), construing the claim term, to determine whether the claim was anticipated by the cited reference.