Nordt Succeeds in Appeal to Federal Circuit on Knee-Brace Application

Nordt Succeeds in Appeal to Federal Circuit on Knee-Brace ApplicationIn re Nordt Dev. Co., LLC, No. 2017-1445, (Fed. Cir. Feb. 8, 2018) (Before Moore, Taranto, and Stoll, J.) (Opinion for the court, Stoll, J.).

Nordt Development Co., LLC appealed the Patent Trial and Appeal Board’s decision affirming arejection of claims 1 and 14 of U.S. Patent Application No. 13/241,865. The Board construed the claim term “injection molded” as a process limitation with no patentable weight. Ultimately, the Federal Circuit disagreed, concluding that the structural nature of the claim term could be gleaned from the claim language together with the description contained in the specification. Therefore, the Board’s affirmation of the examiner’s anticipation rejection was based on an incorrect claim construction.

During prosecution, the examiner rejected Nordt’s application directed to an elastic knee brace as anticipated.  Nordt amended the claims to add that a component of the knee brace be “injection molded.”  The examiner maintained the rejection.  Nordt argued that this was a structural limitation, and therefore the prior art failed to anticipate the claims.  The Board required that Nordt rebut a presumption that “injection molded” was a process limitation in a product-by-process claim (and therefore non-limiting).  The Board found that Nordt failed to rebut the presumption.

On review, Nordt challenged the Board’s finding that the claims were product-by-process claims that precluded the “injection molded” language from carrying patentable weight.  Relying heavily on In re Garnero, the Court found that the Board erred by conflating the issues of whether the relevant language is “a process or structural limitation” and, if structural, “the meaning of the limitation.”  The Court found that “injection molded” connotes structure because, unless the patentee has “demonstrated otherwise,” the presumption in interpreting ambiguous language is to use its “structural sense,” and the specification at issue “describes injection molding as forming an integral component.”  The Court remanded for further proceedings consistent with the opinion.

Despite its ultimate conclusion, the Court observed that Nordt failed to “persuasively or precisely” articulate to the Board “what structural limitation is imparted” by the “injection molded” language. The Federal Circuit explained that had Nordt better articulated its arguments to the Board it may well have succeeded at the Board. Nevertheless, Nordt’s failure to identify that structure did not affect the panel’s conclusion, as the structural nature of “injection molded” can be gleaned from the plain claim language in conjunction with the specification.

 Take Away

Applicants clearly recite the structure connoted by language that the PTO alleges to be product-by-process claim language, for example, by pointing the examiner to structural language in the specification (as the Court did).  



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Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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