I’m looking forward to participating in this week’s Stanford Law School conference focusing on the interplay between the USPTO and the Courts. [Event Website]. On April 17 (Friday), I will be introducing the topic with a discussion of the rise of administrative review proceedings under the America Invents Act of 2011. On the 18th (Saturday), I will be discussing my proposals for claim construction within the USPTO as part of Director Lee’s quality initiative.
In general, the 17th is designed as a practical-focused day with a number of practitioners and judges speaking along with a handful of academics and Judge Moore as the Keynote Speaker. The 18th is the “academic day” and will include presentations from many of the leading patent scholars in the country.
See you there!
Can you believe it? Just as we were discussing the proper interpretation of claim terms in light of the specification, and how to do it when the claim term is not even used in the spec., along come BELDEN INC. v. BERK-TEK LLC, 14-1676 link to cafc.uscourts.gov
Here “channels” was not used in the spec, but apparently was a novel feature. The Board used a dictionary definition. The patent owner argued that channel should read on the corresponding structure in the spec, etc.
“We agree with Berk-Tek that the Board correctly construed “channels” according to its ordinary meaning and the intrinsic record. When construing claim terms, the Board may rely on dictionaries “so long as the dictionary
definition does not contradict any definition found in or ascertained by reading the patent document.” Phillips v. AWH Corp., 415 F.3d 1303, 1322–23 (Fed. Cir. 2005) (en banc) (citations omitted). Here, the specification does not recite, much less define, “channels.” The dictionaries thus provide an adequate starting point, and simply define “channels” as “a long gutter, groove, or furrow.” Board Decision I at 8. Nothing in the intrinsic record conflicts with that ordinary meaning.
Indeed, the specification and prosecution history only elaborate upon that understanding. The patents both derive from the ’116 patent, which describes the term “channel” as a type of “open space.” Because the Board should construe claims consistently across a family of related patents, NTP Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005), the Board correctly Belden argues that the Board incorrectly relied on the
’116 patent because it was neither raised in the petition for review nor addressed in the Board’s decision to institute. We find that argument unpersuasive. The ’116 patent is the parent of the ’061 patent and
the consequent grandparent of the ’575 patent, and the patents have incorporated it by reference. The ’116 patent is thus part of the prosecution history and the specification; the Board appropriately relied on it for guidance.
Moreover, the Board’s construction is consistent with the claim language, which simply describes a channel as an open space defined by the interior support. See, e.g., ’575 patent col. 6 ll. 55–57 (“[A] non-conductive interior
support . . . having a surface that defines a plurality of channels.”); ’061 patent col. 6 ll. 53–54 (describing the channel as “defined by each pair of adjacent arms” of the interior support). Belden argues that “channels” should
instead be substantially enclosed spaces defined by the interior support and the jacket. We find that argument unpersuasive, however. Not only does it contradict the plain language of the claims, see, e.g., ’575 patent col. 6 ll.
64–67 (“[W]herein the outer jacket in combination with the conductive interior support maintains the plurality of twisted pair conductors within the channels defined by the non-conductive interior support.”) (emphases added), but it also ignores the specification, which offers no guidance
to one of ordinary skill as to what “substantially enclosed” would mean.
We also reject Belden’s argument that the Board should have accepted its expert testimony. As an initial matter, a tribunal is not required to accept expert testimony simply because it was not challenged and the declarant
was not deposed. See Applied Med. Res. Corp. v. U.S. Surgical Corp., 147 F.3d 1374, 1379 (Fed. Cir. 1998) (“The fact that Applied Medical did not contest this point with testimony from one of its own experts no more resolves
the factual question in Surgical’s favor . . . .”). Nonetheless, the Board correctly rejected Belden’s expert testimony proffered by the co-inventor, finding that it was “conclusory” and “not supported by a citation to the Specification or an ordinary meaning,” Board Decision I at 14, as we have held that “conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a [tribunal],” Phillips, 415 F.3d at 1318 (citations omitted).
Accordingly, we affirm the Board’s construction that “a channel, as a long gutter, groove, or furrow, is a type of open space defined by the interior support within which at least one of the plurality of twisted pairs is located.”
“Kenneth Korea” of Samsung? What a name.
He is also a great guy.
Dennis, thanks. This is the first I’ve heard of this. I may not be able to attend due to a busy schedule.
Anyhow, good luck.
If you come, make sure to grab me so that we can catch up.
– Dennis
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