TF3 Limited. v. Tre Milano, LLC, No. 2016-2285 (Fed. Cir. July 13, 2018)
In a final written decision in an inter partes review, the Patent Trial and Appeal Board (PTAB) held that the patent-in-suit was invalid as anticipated by two references. The patentee appealed. The Federal Circuit held that the claims had been “construed to have a breadth beyond the scope supported by the device described” in the specification, even under the “broadest reasonable construction” standard. Because the anticipation finding was based on this “flawed analysis,” the invalidity finding was reversed.
The patent-at-issue is directed to a “hair styling device” in which a strand of hair is wound around a rotating member and heated to preserve the curl. The claim provides that after being treated, “the length of hair can pass through the secondary opening” and out of the device. The specification describes the styled hair as passing “out of the secondary opening 50, i.e., to slide along the elongate member . . . and subsequently off its free end.” (Emphasis added). The PTAB held that the claim did not require a secondary opening because the use of “i.e.” did not “signify that passing out of the secondary opening always must be accomplished by sliding along and off the elongate member.”
The Federal Circuit disagreed and explained that the use of “i.e.” in the specification “signals an intent to define the word to which it refers.” Its use is “definitional” when it comports with the inventors’ other uses, and with every other reference to the term in the specification. Here, the specification explains that the invention includes a mode whereby the curl slides out of the device without being forced to uncurl. In these circumstances, the Federal Circuit explained that “it is not reasonable to read the claims more broadly than the description in the specification.” Because the prior art – over which the patentee asserts an improvement – discloses a different device in which the curler itself is ejected from the device, the references do not anticipate.