Summary: CAFC finds proper claim construction based on extrinsic evidence in the prosecution history, but the Board erred in relying on factual findings that were based on the incorrect construction. CAFC also finds no waiver of alternative anticipation arguments due to failure to cross-appeal.

Case: Tempo Lighting, Inc. v Tivoli, LLC, No. 2013-1140 (Fed. Cir. Feb. 10, 2014) (precedential). On appeal from U.S.P.T.O. Patent Trial and Appeal Board. Before Rader, Moore and Wallach.

Procedural Posture: During reexamination, the Board rejected the examiner’s construction of the phrase “inert to light.” Nevertheless, the Board relied on the examiner’s findings that the primary prior art references lacked the “inert to light” limitation. The Board also concluded that Defendant Tempo waived its right to present alternative anticipation arguments because Tempo failed to raise those arguments via cross-appeal. CAFC affirmed-in-part, vacated-in-part and remanded.

  • Claim Construction (Prosecution Disclaimer): The CAFC agreed that the intrinsic evidence in the prosecution history supported the Board’s construction. The phrase “inert to light” was added during prosecution in response to the PTO’s request to rewrite a claim limitation. Its meaning, as explained in the prosecution history, was inconsistent with the examiner’s dictionary definition of “inert.” Although the Board adopted the correct claim construction, it erred in relying on the examiner’s factual findings, which were based on the incorrect construction. Therefore, the CAFC vacated the Board’s reversal of the examiner’s rejections and remanded for new factual findings under the proper construction.
  • Waiver: The Board erred in concluding that Tempo waived its arguments. Under 37 C.F.R. § 41.61(b), one of the requirements for filing a cross-appeal is a final decision favorable to patentability. However, in this instance, the final decision was that all of the claims were unpatentable. Moreover, even if this regulation provided the right to cross-appeal, it did not require Tempo to do so. Citing a Notice of Proposed Rulemaking issued by the PTO, as well as Federal Circuit case law, the CAFC concluded that a cross-appeal would be improper in this instance. Citing additional Federal Circuit case law, the CAFC stated that Tempo had the right to defend the examiner’s final decision on any ground supported by the record. This included advancing arguments under Plaintiff Tivoli’s claim construction.