Federal Circuit Finds USPTO’s Claim Construction Overly Broad in In re Suitco Surface

April 30th, 2010

On April 14, 2010, the United States Court of Appeals for the Federal Circuit decided In re Suitco Surface, Inc.  (Fed. Cir. Case No. 2009-1418), an  appeal  from the Board of Patent Appeals and Interferences (“the Board”) of ex parte reexamination  no. 90/007,015. In a unanimous decision authored by Judge Rader, the court vacated and remanded the PTO’s claim rejections because those rejections were premised on unreasonable claim constructions.   Specifically, the court held that the PTO’s claim construction was over broad because it did not consider the patent specification in connection with the broadest-reasonable-interpretation standard:

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.  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 specification.’)

The court’s holding is significant for reexamination practice because the CRU often fails to give the specification its proper weight in construing claim terms.  When the specification is given short shrift, or even ignored, the patent owner may be harmed irreparably because the resulting construction is often overly broad.  An overly broad claim construction can force otherwise unnecessary claim amendments, which in turn can greatly impact potential damages available to the patent owner.  An overly broad construction also can force unnecessary argument-based estoppels as the patent owner challenges the construction.  Finally, a broad construction could draw in more potentially invalidating references than would have been available under a narrower construction according to the claim construction principles used by district courts. 

The court declined to address an issue of critical importance where a reexamination proceeds in parallel to district court litigation — whether a federal court’s Markman ruling binds the PTO:

 With respect to the “material for finishing the top surface of the floor” limitation, Suitco contends that the Board should have been bound by this court’s earlier construction of “material for finishing.”  In the alternative, Suitco contends that the Board’s adopted construction is unreasonable.  This court need not address Suitco’s first argument because even under the broadest-construction rubic, the PTO’s construction is unreasonable.”

In our view, the failure of the Court to address this important reexamination issue is significant.  The issue is what role Markman rulings in parallel proceedings should play in PTO during reexamination.  This issue is ripe for treatment by the Federal Circuit and cuts to the larger issue of whether it is even appropriate to apply the broadest reasonable interpretation (“BRI”) standard during reexamination.  The premise for the PTO’s application of the BRI standard is that the applicant has the ability to amend claims.  But some argue this is not the case in reexamination with parallel district court proceedings.  The argument against the CRU applying the BRI standard is that the patent owner, from a practical perspective, does not have the same freedom to amend claims.  Claim amendments can significantly impact not only patent damages but the entire court proceeding and can lead to great waste.  By taking a broader claim construction at the CRU, the PTO effectively whipsaws the patent owner because the district court mandate to follow well established claim construction canons outlined in Philips.  This violates the basic patent law tenent that claims should be construed the same for validity and infringement.  Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (“[i]t is axiomatic that claims are construed the same way for both invalidity and infringement.”)