Two recent Federal Circuit decisions illustrate how an error in construing claims may lead the court to reverse a PTAB final written decision. In Organik Kimya AS v. Rohm & Haas Co., the Federal Circuit determined that the PTAB correctly construed the disputed claim term, “swelling agent,” and therefore affirmed the PTAB’s decisions upholding the patentability of challenged claims directed to processes for preparing emulsion polymers. In contrast, in Owens Corning v. Fast Felt Corp., decided on the same day, the court determined that the PTAB erred in construing the term “roofing or building cover material” too narrowly, and thus reversed the PTAB’s decision canceling claims directed to methods of applying polymer “nail tabs” on roofing and building cover material.

In Organik Kimya, the court addressed the PTAB’s decisions (one of which we previously discussed), confirming the patentability of Rohm & Hass’s challenged claims directed to processes for preparing certain emulsion polymers having improved opacity. In both appeals, the petitioner argued that the PTAB erred in construing the term “swelling agent” too narrowly, as including the functional requirement of operating “under the conditions of the specific process for which the agent is to be used.” In view of the specification’s discussion of “swelling agent,” which described its functional characteristics, the court determined that the PTAB correctly construed the term “as conforming to the conditions and process in which it is used, as stated in the specification.”

In Owens Corning, the court reached a different conclusion in evaluating a disputed claim term, determining that the PTAB erred in construing the term “roofing or building cover material” too narrowly, as limited to material that either has been or would be coated or saturated with asphalt or asphalt mix. Although the specification described preferred embodiments that include roofing materials that are or will be coated or saturated with asphalt or asphalt mix, the claim language was not so limited. The court noted that the claims “are not even limited to ‘roofing materials,’ as they all expressly include ‘building cover material’ as well as roofing material,” and that the parties did not dispute that some building cover materials are “commonly installed without ever being coated or saturated with asphalt or asphalt mix.” In view of the correct construction, the court concluded that “there is only one permissible factual finding,” and thus determined that the challenged claims were unpatentable for obviousness, reversing the PTAB’s decision.

These cases illustrate that claim construction under the BRI standard applied by the PTAB really is reviewed without deference by the Federal Circuit, and that errors in claim construction may be a basis for reversing the PTAB’s decision on patentability. In both cases the court applied its typical approach to claim construction: the court focused on the claim language itself, in view of the specification, and also considered expert testimony in the record. Why was there a different outcome? As you might expect, the difference reflects different claim language. In one case the PTAB erred by failing to give proper weight to claim language (or building cover material) that in view of the specification gave the claim a broader scope (including building cover materials not coated in asphalt). In the other case, however, the PTAB correctly construed the claim language (swelling agent), which in view of the specification had a relatively narrow scope.