United States: Examiners May Not Rely On Extrinsic Dictionary Definitions Inconsistent With Intrinsic Evidence For Claim Construction

In Tempo Lighting, Inc. v. Tivoli, LLC, No. 13-1140 (Fed. Cir. Feb. 10, 2014), the Federal Circuit affirmed the Board's construction of "inert to light," as claimed in U.S. Patent No. 6,554,446 ("the '446 patent").  But the Court vacated the Board's determinations that prior art references did not disclose the "inert to light" limitation and that Tempo Lighting, Inc. ("Tempo") waived its alternative claim construction arguments by not filing a cross-appeal at the Board.

Tempo requested inter partes reexamination of the '446 patent after Tivoli, LLC ("Tivoli"), owner of the '446 patent, sued Tempo for patent infringement.  Claim 1 of the '446 patent recites "[a] lighting apparatus comprising: a first extruded portion shaped to mount on the nose of a stair step; and, a second extruded portion coextruded with said first portion and mounted on top of the first portion so as to be above the nose of the stair step, said second portion comprising a material inert to light . . . ." Slip op. at 2 (citation omitted).  The examiner, citing a dictionary, construed the term "inert to light" as "a material that either does not react, e.g. by degrading, when exposed to light or a material that does not react because it has been treated with or includes some additive, which inhibits degradation of the material when exposed to light."  Id. at 3 (citation omitted).  The examiner then adopted five of Tempo's sixty obviousness rejections.  Tivoli appealed and Tempo's brief on appeal included arguments supporting the examiner's rejections and alternative grounds for upholding the examiner's determination using Tivoli's proposed claim construction for "inert to light."

The Board rejected the examiner's claim construction because Tivoli defined "inert to light" during prosecution of the '446 patent as "non-photoluminescent and not activated to glow by absorbing ambient light."  Id. at 4 (citation omitted).  After rejecting the examiner's claim construction and adopting Tivoli's definition of "inert to light," the Board still relied on the examiner's findings that the primary prior art references lacked the "inert to light" limitation.  Finally, the Board concluded that Tempo waived its alternative arguments pertaining to anticipation by certain references because Tempo did not file a cross-appeal raising those arguments.  Tempo filed a request for rehearing, which the Board denied.

"The examiner instead relied on an extrinsic dictionary definition of 'inert.'  This extrinsic evidence is not irrelevant, but has relatively little probative value in view of the prevailing intrinsic evidence.  In sum, the examiner erred by resorting to extrinsic evidence that was inconsistent with the more reliable intrinsic evidence."  Slip op. at 7 (citation omitted).

"Thus, one of the threshold conditions for a cross-appeal is a final decision favorable to patentability.  In this case, the examiner rejected all the claims.  Thus, the record presented no decision favorable to patentability for Tempo to appeal."  Id. at 9.

On appeal, the Federal Circuit first affirmed the Board's construction of "inert to light."  The Court held that intrinsic evidence supported the Board's construction because Tivoli amended the claims to recite "inert to light" while also supplying a meaning for the limitation.  The Court noted that the examiner's proposed construction, relying on dictionary definitions, lacked support from intrinsic evidence, and the examiner also erred "by resorting to extrinsic evidence that was inconsistent with the more reliable intrinsic evidence."  Id. at 7.  The Court further noted that the Board construed "inert to light" consistently with the specification and properly "avoided the circularity inherent in any attempt to construe claims with an eye to preserving their validity."  Id. at 8.  While the PTO generally need not accept a claim construction proffered as a prosecution history disclaimer, the Court held that, in this instance, it was appropriate because the PTO specifically requested that Tivoli rewrite the "non-photoluminescent" limitation in positive terms. 

The Federal Circuit then vacated the Board's determination that the primary prior art references lacked the "inert to light" limitation.  The Court held that the Board erred by relying on factual findings resting on the examiner's incorrect claim construction.  The Court determined that the Board reasoned incorrectly because it only cited "the examiner's findings under the reversed—and substantially different—claim construction."  Id.  On remand, the Court instructed the Board to make new factual findings under the proper construction.

The Federal Circuit also held that the Board's refusal to consider Tempo's alternative arguments on appeal rested on a clearly erroneous interpretation of 37 C.F.R. § 41.61(b), which states that "a requester who has not filed a notice of appeal may file a notice of cross appeal with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent."  Id. at 9 (quoting 37 C.F.R. § 41.61(b)).  The Court noted a threshold condition for a cross-appeal is a final decision favoring patentability, and this case did not meet said threshold, as the examiner rejected all claims, "a decision decidedly unfavorable to patentability."  Id.  The Court reasoned that, even if 37 C.F.R. § 41.61(b) gave Tempo the right to raise its arguments in a cross-appeal, the regulation only stated that Tempo "may" do so, not that it must.  The Court further reasoned that Tempo did not seek to enlarge its rights or lessen the rights of an adversary, both of which generally necessitate a cross-appeal.  "Throughout the reexamination, Tempo argued that the primary references anticipate the claims under Tivoli's construction.  While Tempo argued in favor of the examiner's construction and rejections, this did not foreclose Tempo from also advancing arguments under the construction proposed by Tivoli."  Id. at 10-11 (citation omitted).  Finally, the Court held that Tempo's conduct did not rise to the level of waiver or invoke judicial estoppel.

Accordingly, the Court affirmed the Board's construction of "inert to light" and vacated the Board's decisions that the primary prior art references lacked the "inert to light" limitation and that Tempo waived its alternative arguments by not filing a cross-appeal.

This article previously appeared in Last Month at the Federal Circuit, March 2014.

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