Federal Circuit Summaries
Before Newman, Wallach, and Chen. Appeal from the Patent Trial and Appeal Board
Summary: The Federal Circuit upheld the Patent Trial and Appeal Board’s claim construction in an inter partes reexamination, where the Board applied the broadest reasonable interpretation standard and the Board did not depart from a prior Federal Circuit construction.
In an inter partes reexamination, the Board affirmed an examiner’s rejection of certain claims as anticipated based on its construction of the preamble term “package,” which it found to be limiting. The Board also affirmed the rejection of proposed claims for lack of an adequate written description because the specification did not identify a “solder reflow process” as recited in the proposed claims and such a process was not commonly understood at the time of the disclosure.
The Federal Circuit affirmed the Board’s decision on both issues. The Federal Circuit noted that the Board properly considered extrinsic evidence when construing the term “package” and found the Board’s construction “in accord” with the definitions adopted by the Federal Circuit in a prior decision concerning the same patent. The Federal Circuit did not discuss whether its prior decision was binding on the Board. Applying the pre-AIA § 112 written description requirement, the Federal Circuit found that the Board’s written description decision was supported by substantial evidence showing that a person of skill in the art would not have recognized that the inventor possessed solder pads “configured to” connect to a printed circuit board through a reflow process. The court reiterated that “it is not sufficient for purposes of the written description requirement that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to the modifications that the inventor might have envisioned, but failed to disclose.”
Judge Newman dissented. Judge Newman concluded that the Board’s claim construction was not consistent with the prior Federal Circuit decision. Further, she argued, Federal Circuit decisions construing claims are binding on the Board, even in proceedings where the broadest reasonable interpretation applies.