BRI does not allow unfettered license to disregard inventor’s description of the invention

BRI does not allow unfettered license to disregard inventor's description of the inventionIn re Power Integrations, Inc., No. 2017-1304, 2018 (Fed. Cir. Mar. 19, 2018) (Before Moore, Mayer, and Stoll, J.) (Opinion for the court, Mayer, J.)

The Court reversed a PTAB decision invalidating Power Integrations’ U.S. Patent No. 6,249,786 (“the patent”) as anticipated because the Board’s decision was based on an unreasonably broad claim construction.

The patent covers a circuit that reduces electronic magnetic interference by “jittering the switching frequency of a switched mode power supply.”  At issue was the term “coupled,” which had been construed previously in a reexamination proceeding and in district court.

In 2014, the patent was asserted against Fairchild Semiconductor in the Delaware, where the court construed “coupled” to require two circuits to be connected in a manner “such that voltage, current or control signals pass from one to another” and that coupling is “present for the purposes of control.”

The PTO instituted ex parte reexamination in 2006, while the district court litigation was pending, and rejected the relevant claims as anticipated, which the Board affirmed.  The Board’s construction of “coupled” merely required the “[components] functioning together” as “joined into a single circuit.”  The Board rejected arguments that the references failed to disclose a “coupled” circuit as claimed, because “they disclose a ROM separating a counter from a digital to analog converter.”  (The interjected ROM would control signals, not the coupled circuits.)  The Board also rejected a similar argument that another reference failed to anticipate because it used an EPROM between the counter and the digital to analog converter.

In 2015, the Court vacated the Board’s rejection because the claim construction, using a generalist dictionary, “failed to provide a full and reasoned explanation of its decision.”  On remand, the Board acknowledged the Court’s concern regarding “coupled,” but ultimately determined that consideration of the district court’s claim construction was “unwarranted.” It affirmed its rejection of the claims.

On its second review, the Court took issue with the PTO’s construction of “coupled.” While the “broadest reasonable interpretation” applies at the PTO, that interpretation must be consistent with the specification, and does not allow “unfettered license to interpret the words in a claim.”  The Court pointed to several portions of the specification that support a narrower construction of “coupled”, noting that the patent “strives to eliminate unnecessary components and create a more compact circuit.”

The Court also rejected the Board’s reasoning that the specification failed to “proscribe[] or preclude[]” the Board’s construction.  Instead, “a proper claim construction analysis endeavors to assign a meaning to a disputed claim term that corresponds with how the inventor describes his invention in the specification.”  The Court adopted the construction applied by the district court, and found that “[i]n short, because the prior art relies on an intervening memory to adjust the control input, it does not disclose a counter which is ‘coupled’ to a digital to analog converter and ‘caus[es]’ it ‘to adjust the control input and to vary the switching frequency of the power supply.’”

Take Away

The broadest reasonable interpretation of a claim term does not allow “unfettered license” to disregard “how the inventor describes his invention in the specification.” 

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Joseph Robinson

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.

Joseph Robinson

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.

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There are currently 1 Comment comments.

  1. AAA JJ March 26, 2018 8:11 pm

    When a panel of APJ’s can’t get the BRI correct, what possibility is there for an examiner looking for first class tickets on the RCE gravy train to get it correct?

    I’m thinking of a big, round number.