Scott Daniels | June 14, 2011
Lawyers promoting reexamination often assert as one of its principal advantages the fact that the PTO gives claims their “broadest reasonable construction” consistent with the specification, whereas courts follow the CAFC’s 2005 Phillips Decision and construe claims more narrowly. The point for accused infringers is that claims construed broadly in reexamination are more likely to be found invalid over the prior art than are claims construed narrowly in the courts.
This difference in claim construction is certainly a clear theoretical distinction between reexamination and patent litigation, but what is the practical result of this theoretical distinction? Each reexamination lawyer is likely to have a different answer, usually based on anecdote, not statistics. My personal answer is that despite the different standards, there is usually no difference in how the claims are construed or in the outcome of the validity issue.
And my anecdote is the PTO Board decision Friday, Ex parte Lacks Industries (90/009,422). There, Lacks Industries had sued Hayes Wheel Int’l and another company for infringement of U.S. Patent No. 5,597,213. Hayes replied by requesting reexamination of the ‘213 patent, and the trial judge stayed the litigation pending completion of the reexamination. Thus, reexamination would have a decisive, or at least significant, impact on the outcome of the dispute. And, as will be seen, claim construction would have a major effect on the reexamination.
The ‘213 claims recited a method for assembling a wheel, including the step of “assembling … said wheel with said curable adhesive so as to form said gap and permanently secure said overlay to said wheel …” (emphasis added). The examiner made a point of giving the claims their “broadest reasonable interpretation,” concluding that the claim requirement of an adhesive “permanently securing” certain wheel components meant simply that the adhesive be “permanent.” Since two prior art references disclosed each feature of the claimed method, including materials that “are well known to be permanent adhesives,” the examiner rejected the ‘213 claims. The fact that the references included additional fasteners to secure the components did not matter, the examiner found, because the transitional phrase “comprising” in the ‘213 claims did not preclude such non-adhesive fasteners.
On appeal, the Board agreed with the examiner that any claim construction in the pending litigation was not binding on the PTO, that the broadest reasonable claim construction should be used, and that the ‘213 claims did not preclude non-adhesive fasteners.
But the Board disagreed with the examiner on the broadest reasonable construction – it looked to the ‘213 specification and determined that “while the appealed claims are open to the presence of additional fastening materials, the recited curable adhesive alone must be capable of permanently securing the overlay to the wheel” (emphasis added). The Board then distinguished the two references relied upon by the examiner because they appeared to require non-adhesive attachments and failed to disclose use of adhesive in amounts sufficient so that the adhesive alone was capable of securing the components.
The Board applied the broadest reasonable construction that, it so happens, was sufficiently narrow to distinguish the claims patentably over the prior art. The Board therefore reversed the rejection, and the case returns to court.