November 5, 2012

En Banc Review of the Standard for Reviewing USPTO Claim Constructions Recommended by Panel of Federal Circuit Judges

Thumbnail image for Thumbnail image for Thumbnail image for federalcircuit.jpgA panel of three federal circuit judges, Judges Newman, Plager, and Wallach, upheld a decision of the Board of Patent Appeals and Interferences ("Board") in an inter partes reexamination rejecting certain claims of U.S. Patent No. 6,721,178, owned by Flo Healthcare Solutions, LLC ("Flo"), in an opinion decided on October 23, 2012. U.S. Patent No. 6,721,178 claims a mobile computer workstation for the medical profession.

While the judges disagreed with the reasoning of the Board, the conclusion by the Board was upheld. Judge Plager wrote in the opinion that "the Board erred in holding that the 'height adjustment mechanism' limitation of the claims invokes 35 U.S.C. § 112, ¶ 6" because the term "means" was not recited in the claims and the limitation contains a term that designates structure. However, the Board correctly held that "the claims do not require a length-adjustable vertical beam" since the claims do not recite such a limitation even though Flo had the opportunity to amend the claims to include this limitation. Thus, the panel agreed that "the prior art rejections must stand in the absence of such a limitation."

Notably, Judge Plager and Judge Newman both wrote additional views to this opinion urging the en banc review of the standard used by the Federal Circuit when reviewing claim construction decisions by the Board. Both judges were concerned that the Federal Circuit had announced conflicting standards for reviewing such claim constructions. This review would provide a clear standard for the PTO and inventors urged the judges.

In his additional views, Judge Plager states that the opinion "intentionally elides the question of the standard of review applied by this court to claim construction decisions of the Board." While the outcome in this case was the same regardless of the standard applied, Judge Plager cautions that this may not always be true. Judge Plager then summarizes that there are there are two and possibly three different standards that have been used by the Federal Circuit. The standards differ based on two factors: whether the Federal Circuit is deferential to the Board when reviewing the Board's claim construction and whether the Federal Circuit should construe a claim limitation based on the "broadest reasonable interpretation" or a single interpretation.

In In re Morris, 127 F. 3d 1048 (Fed. Cir. 1997), the Federal Circuit first maintained that the Board should apply the "broadest reasonable interpretation" standard taking into account the written description of the specification to claim construction issues before it. The opinion then continued by stating the Federal Circuit's standard for reviewing claim constructions by the Board is "whether the PTO's interpretation of the disputed claim language is 'reasonable.'" Judge Plager views In re Morris as providing a deferential standard for review.

The second standard of review discussed by Judge Plager is the standard followed in In re Baker Hughes, 215 F.3d 1297 (Fed. Cir. 2000). Here, the Federal Circuit reviewed the Board's claim construction de novo like its review of claim construction by a district court. In re Morris was not cited in In re Baker. Judge Plager notes that review of claim construction by a district court is a search "for the one 'correct' interpretation."

Finally, Judge Plager discusses the standard applied in In re Abbott Diabetes Care Inc., Nos. 2011-1516, 1517 2012 WL 4465236 (Fed. Cir. September 28, 2012). Judge Plager notes that there is the application of a "non-deferential review by the court, but with the court applying the broadest reasonable interpretation of the claim consistent with the administrative practice, rather than a single 'correct' interpretation." Judge Plager calls this approach "blended."

Judge Newman's additional views express her concern that the Federal Circuit is not providing a consistent and correct application of patent law. She notes that this is "not merely of philosophical concern, but of critical economic consequence." According to Judge Newman, the Federal Circuit should not determine if the USPTO's claim construction is reasonable in light of the specification. Instead, Judge Newman urges that claim construction by the PTO should be reviewed de novo.