THE CAFC RULES THAT A BRI CLAIM CONSTRUCTION THAT DOES NOT REASONABLY REFLECT THE PLAN LANGUAGE AND DISCLOSURE WILL NOT PASS MUSTER
In re Man Mach. Interface Techs. LLC Fed. Cir. Apr.19, 2016 before Lourie, O’Malley, and Stoll, J. (Opinion for the court, Stoll, J.)
Man Machine’s ’614 patent titled “Man Machine Interface via Display Peripheral” is directed to a remote control device for making selections on television or computer screens. Claim 1 requires that the body of the device be “adapted to be held by the human hand.” Claim 1 also requires a multi-function “thumb switch being adapted for activation by a human thumb.” The thumb switch, which controls cursor movement and object selection on the screen, includes an annular switch including four switches that surround a center switch.
A third party requested ex parte reexamination of the ’614 patent, which the PTO granted. The examiner rejected the claims as anticipated and obvious, relying primarily on Japanese Patent No. 58-219634 (“JP ’634”), which discloses a desk -bound mouse and a “cursor locking key” surrounded by four “cursor moving keys” operable by a user’s finger to control cursor movement on a screen.
THE CAFC OPINION CONTINUALLY REINFORCES THE LIMITATIONS ON BRI CLAIM CONSTRUCTION
Note: All emphasis added.
While acknowledging that in reexamination, claims are given their broadest reasonable interpretation (“BRI”); the CAFC found that “the construction cannot be divorced from the specification and the record evidence.”
Based on the language in the specification, the CAFC rejected the Board’s unreasonably broad construction and construed “adapted to be held by the human hand” to mean “designed or made to be held by the human hand.” Similarly, it rejected the Board’s overly broad construction of “thumb switch being adapted for activation by the human thumb” and determined that Claim 1 expressly requires a thumb switch, not a finger switch.
This court’s (the CAFC) cases on BRI make clear that the proper BRI construction is not just the broadest construction, but rather the broadest reasonable construction in light of the specification Proxyconn, 789 F.3d at 1298 (“A construction that is unreasonably broad and which does not reasonably reflect the plain language and disclosure will not pass muster.”
The Court addressed the Board’s broad construction of “thumb switch being adapted for activation by a human thumb” as being merely capable of activation by a human thumb is unreasonable in view of the specification’s clear teaching that the patentee intended a narrower meaning. As we have explained ….the broadest reasonable interpretation must be reasonable in light of the claims and specification.
Because the Board’s anticipation rejection was based on erroneous claim constructions and the rejection is not supported under the proper constructions, we reverse the Board’s finding that JP ’634 anticipates claim 1 of Man Machine’s ’614 patent.
Regarding the obviousness rejections of claims 7, 9, and 17, the Court stated: We (the CAFC) cannot consider the obviousness rejections of claims 7, 9, and 17 because neither party introduced those arguments on appeal besides challenging the claim constructions on which they are based. Accordingly, we vacate those rejections and remand for the Board to consider the obviousness rejections of claims 7, 9, and 1 7 in view of the correct claim constructions.
Regarding the obviousness of claims 1, 4, 8, and 10, the Court affirmed the Board’s determination that these claims would have been obvious over Florin in view of JP ’634.
This is an interesting case that seems to support the proposition that, at least some Judges in the CAFC, are beginning to lean towards the position in this case, which is (citing Proxyconn) that “A construction that is unreasonably broad and which does not reasonably reflect the plain language and disclosure will not pass muster.”