April 30, 2020

Board Misconstrued Scope of Prior Art By Relying on Reference Numerals in its Claims

In Grit Energy Solutions, LLC v. Oren Technologies, LLC, [2019-1063] (April 30, 2020), the Court of Appeals for the Federal Circuit vacated and remanded the PTAB’s Final Written Decision that Grit Energy had not met its burden of showing that the challenged claims of U.S. Patent No. 8,585,341 on a discharge system for proppant used in fracking were unpatentable as obvious.

On appeal, Grit Energy contended that the Board’s determination that prior art does not disclose the ’341 configuration is unsupported by substantial evidence, and the Federal Circuit agreed. The reference disclosed that a stud on one shutter engaged an orifice on another shutter, but claim 5 was written broad enough to cover the stud and orifice being on the opposite shutters. The Federal Circuit found that the Board’s findings rested on an erroneous reading of claim 5. This erroneous interpretation arose from the claims inclusion of parenthetical reference numerals. The Federal Circuit said that including references to a narrower non-limiting example serves not to limit the disclosure provided by the claims to that non-limiting example, but rather to map the embodiment to the claims.

This case is notable for crediting the prior art with the scope of its broad claims, which went beyond the explicit description in the specification, and for finding the references numerals in the claims did not limit their scope.