Federal Circuit Summaries

Before Moor, Mayer, and Stoll. Appeal from the patent Trial and Appeal Board

Summary: The broadest reasonable interpretation of a claim term cannot be so broad that it is inconsistent with the specification or renders the term meaningless.

Fairchild Semiconductor sought reexamination of a Power Integrations patent that had been asserted in litigation. The patent relates to “a technique for reducing electromagnetic interference (‘EMI’) noise.” In parallel district court litigation, a jury found the patent valid over the prior art, and the Federal Circuit separately affirmed that decision. The reexamination focused on the same prior art as the district court litigation. The Federal Circuit previously reversed the Board’s rejection of the claims for improper construction of the term “coupled” and ordered the Board to consider the district court’s construction, which was narrower than the Board’s. The Board again broadly construed the term “coupled” to mean “only that two components be ‘join[ed] . . . into a single . . . circuit’” in view of “generalist dictionary definition[s].” This is an appeal of the Board’s second reexamination decision.

The Federal Circuit reversed because the Board’s construction was “unreasonably broad and improperly omitted any consideration of the disclosure in the specification.” The Federal Circuit held that the patent’s specification set forth a specific relationship between the “coupled” components, and the Board’s construction ignored that relationship. In doing so, the Board rendered the term “coupled” meaningless as it could be satisfied so long as the two components were in the system, which was contrary to the teachings of the patent. The Board’s construction was also inconsistent with claim language that required one of the coupled elements to directly act on the other coupled element.

The court concluded “[t]he board has had two opportunities to come up with a sustainable interpretation that differs from the one that survived litigation and has failed. We conclude there is not one.” The Federal Circuit adopted the district court’s claim construction and reversed all of the Board’s rejections.