PTO’s Overbroad Claim Construction is Not Reasonable
Patent prosecutors, have you ever felt that the PTO’s constructions of your pending claims were just hideously overbroad? (Can I get an “Amen”?). Today, the Federal Circuit helped you out by deciding an appeal from reexamination proceedings in the U.S. Patent and Trademark Office (PTO). The Federal Circuit’s decision in In re Suitco Surface can be summarized in one quote from the opinion (which you will rejoice in pasting into your Office action responses and Appeal briefs):
The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.
Suitco Surface, Inc. owns U.S. Patent No. 4,944,514 (’514 patent), claiming a “floor finishing material” for use on athletic courts, bowling lanes, and other “floor surfaces [made] of wood, linoleum, terrazzo, [or] concrete.” Claim 4 is representative:
4. On a floor having a flat top surface and an improved material for finishing the top surface of the floor, the improvement comprising:
at least one elongated sheet including a uniform flexible film of clear plastic material having a thickness between about one mil and about twenty-five mils and
a continuous layer of adhesive material disposed between the top surface of the floor and the flexible film, the adhesive layer releasably adhering the flexible film onto the top surface of the floor.
This is the third trip to the Federal Circuit for the ’514 patent. In 1996, Middleton, Inc., the exclusive licensee of the ’514 patent, brought suit against 3M Company in the U.S. District Court for the Northern District of Illinois alleging infringement of claims 1-4 of the ’514 patent. In that case, the district court construed the terms “material for finishing” and “uniform flexible film.” “Material for finishing” was construed to mean “a material that makes more durable the underlying surface of the floor, and is applied for that purpose.” “Uniform flexible film” was construed to mean “the material must be of a uniform thickness, and excludes material in which there are any variations in thickness.”
3M moved for summary judgment of noninfringement based on both limitations, but the district court granted the motion based solely on “material for finishing.” Middleton, Inc. v. Minn. Mining & Mfg. Co., No. 96 C 6781, 1998 WL 852841 (N.D. Ill. Nov. 24, 1998). Middleton appealed and the Federal Circuit vacated and remanded, finding no support for “durability” in the ‘514 patent’s specification or prosecution history. Middleton, Inc. v. Minn. Mining & Mfg. Co., No. 96 C 6781, 1999 WL 1072246 at *4 (Fed. Cir. Nov. 16, 1999).
On remand, the Northern District of Illinois granted 3M’s second motion for summary judgment, this time based on the “uniform flexible film” limitation. Middleton, Inc. v. Minn. Mining & Mfg. Co., No. 96 C 6781, 2001 WL 1155151 at *2 (N.D. Ill. Sept. 28, 2001). The Federal Circuit again remanded, finding that the district court’s construction was too narrow. Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1389 (Fed. Cir. 2002).
The Northern District being by now sick of the proceedings (blatant conjecture), it transferred the case to the Southern District of Iowa. 3M then filed an ex parte reexamination request with the PTO. The district court stayed the case after the request was granted. In reexam, the examiner rejected the claims on various grounds (not discussed here) after construing their terms. Suitco appealed to the PTO’s Board of Patent Appeals and Interferences (BPAI).
In affirming the examiner’s rejections, the BPAI construed the term “material for finishing the top surface of the floor” to mean “requiring a material that is structurally suitable for placement on the top surface of a floor.” Under that construction, according to the Board, the “material for finishing the top surface of the floor” could be any layer above the floor regardless of whether it was the top or final layer (emphasis in Federal Circuit opinion). Suitco appealed.
The Federal Circuit cited the appropriate standards for claim construction and review:
“During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). This Court thus reviews the PTO’s interpretation of disputed claim language to determine whether it is “reasonable.” In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997).
Suitco argued both that the Board should have been bound by the Federal Circuit’s earlier construction of “material for finishing the top surface of the floor,” and that the Board’s adopted construction was unreasonable. The Federal Circuit considered only the latter point, and vacated the BPAI’s holding.
The Federal Circuit noted that the language of the claims requires a “material for finishing the top surface of the floor” (emphases in opinion). In light of this, the court noted that
“[a] material cannot be finishing any surface unless it is the final layer on that surface. Otherwise, the material would not be ‘finishing’ the surface in any meaningful sense of the word. The PTO’s proffered construction ignores this reality by allowing the finishing material to fall anywhere above the surface being finished regardless of whether it actually ‘finishes’ the surface….If the PTO’s construction were accepted, a prior art reference with carpet on top of wood, on top of tile, on top of concrete, on top of a thin adhesive plastic sheet anticipates the claims in question because an adhesive plastic sheet falls at some point in the chain of layers. This construction does not reasonably reflect the plain language and disclosure of the ’514 patent.” (emphasis added).
The Federal Circuit thus vacated the BPAI’s rejection and remanded for new proceedings on this issue:
Although the PTO emphasizes that it was required to give all “claims their broadest reasonable construction” particularly with respect to claim 4’s use of the open-ended term “comprising,” see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“the open-ended term comprising . . . means that the named elements are essential, but other elements may be added”), this court has instructed that any such construction be “consistent with the specification, . . . and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983)) (emphasis added).
The PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”). In that vein, the express language of the claim and the specification require the finishing material to be the top and final layer on the surface being finished. See, e.g., ’514 patent, col.1 ll.15-20 (“The present invention is directed generally to a material and method for quickly and easily producing a transparent wear resistant finish on a smooth flat surface subject to wear and more particularly to a material and method for finishing a floor . . . .”). The PTO’s proffered construction therefore fails. (emphasis added).
As noted above, patent prosecutors may want to copy and paste the above holding into their word processors relatively liberally. In light of KSR Int’l Co. v. Teleflex Inc., the PTO has broad discretion to make obviousness rejections over the prior art. One way to fight those rejections (assuming the patent applicant and his or her prosecutor are interested) is to argue that the PTO’s construction of the claims is overbroad (as they certainly can be), thus narrowing the field of applicable prior art. Incorporating the Federal Circuit’s holding into an AutoText entry might be a nice shortcut in beginning your next “overbroad reasonable construction” argument.