April 19, 2016

It’s Not the Broadest Reasonable Interpretation, but the Broadest Reasonable Interpretation in Light of the Specification

In In re Man Machine Interface Tech. LLC, [2015-1562] (April 19, 2016), the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the PTAB’s affirmance of the rejection of claims of U.S. Patent No. 6,069,614 in ex parte reexamination.

The patent is directed to a remote control device for making selections on television or computer screens.  The examiner construed the claim term “adapted to be held by the human hand” in the patent broadly to include various “forms of grasp or grasping by a user’s hand,” such as the grasping of the mouse on a desk top.  The examiner similarly interpreted the claim term “thumb switch”  as “merely requir[ing] that a switch . . . be capable of being enabled/activated by a thumb but . . . not preclud[ing] another digit, i.e. index finger.”  Based upon these broad constructions, the reexamination examiner found the claims anticipated.  The PTAB affirmed emphasizing that appellant had not cited to a definition of ‘a body adapted to be held by the human hand’ or ‘thumb switch’ in the Specification that would preclude the Examiner’s broader reading.

The Federal circuit found that the intrinsic record fully determines the proper construction, so its review was de novo. Noting that in reexamination the Board must give the terms their broadest reasonable construction, this construction cannot be divorced from the specification and the record evidence.

The Federal Circuit said that the phrase “adapted to” generally means “made to,” “designed to,” or “configured to,” though it can also be used more broadly to mean “capable of” or “suitable for.”  The Federal Circuit found that “adapted to,” as used in the ’614 claims and specification, has the narrower meaning — that the claimed remote control device is made or designed to be held in the human hand and the thumb switch is made or designed for activation by a human thumb.

The Federal Circuit found support for this in the written description, including an express distinction between the claimed device and the deskbound devices in the applied prior art.  The Federal Circuit said: “The broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification.” Based upon the language of the specification, the Federal Circuit rejected the Board’s unreasonably broad construction and construe “adapted to be held by the human hand” to mean “designed or made to be held by the human hand,” which it said excluded the desk-bound mouse of the prior art.

Similarly the Federal Circuit rejected the Board’s overly broad construction of “thumb switch being adapted for activation by the human thumb,” noting that the construction ignores the term “thumb” in “thumb switch., or in light of the specification.  The Federal Circuit reminded that the proper BRI construction is not just the broadest construction, but rather the broadest reasonable construction in light of the specification.  A construction that is unreasonably broad and which does not reasonably reflect the plain language and disclosure will not pass muster.

The Federal Circuit said that 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.

Because the Board’s anticipation rejection was based on erroneous claim constructions and the rejection is not supported under the proper constructions, the finding of anticipate was reversed.