The Broadest Reasonable Claim Interpretation Cannot Exceed the Specification

TF3 Ltd. v. Tre Milano, LLC, No. 2016-2285, (Fed. Cir. July 13, 2018) (Before Newman, Lourie, and Hughes, J.) (Opinion for the court, Newman, J.)

TF3’s patent-in-suit is for a “hair styling device” that automated the curling of hair. TF3 appealed the decision of the Board in an IPR requested by Tre Milano. Based upon its broad construction of certain claim terms, the Board held that two prior art references made the challenged patent claims invalid for anticipation. TF3 appealed.

The Federal Circuit reversed the Board’s decision because it imposed a claim construction that was broader than the description in the patent specification. This enlarged the claims beyond their correct scope, even under a “broadest reasonable interpretation” standard. The Federal Circuit noted that “[a]bove all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.”

First, the Board failed to construe “the length of hair can pass through the secondary opening” and so did not limit the claims to require a second opening. The specification described how the curled hair is removed from the device without being uncurled, which required a second opening. Nonetheless, the Board found the requirement of a second opening irrelevant, by relying on the phrase “i.e., to slide along the elongate member towards and subsequently off its free end.” The Board stated that “[w]e do not understand the use of ‘i.e.’ to signify that the passing out of the secondary opening always must be accomplished by sliding along and off the elongate member.” In response, the Federal Circuit explained that the usage of “i.e.” in the specification does signal “an intent to define the word to which it refers,” in this case a mode whereby the curl slides out of the device without stretching or uncurling, via a second opening. In context, the Board erred by finding that “i.e.” did not require a second opening such that the hair curl can be removed from the device without being uncurled. Ultimately, the Court concluded that the patent describes the device as improving curl retention by a structure that “permits a formed curl to slide off the end of the elongate member without being uncurled,” a structure which the cited prior art references did not disclose.

Next, the Board construed “free end” to mean “an end of the elongate member that is unsupported when the movable abutment is in the open position.” The Board’s construction was incorrect because the specification is clear that the free end is not a structural support, but an end over which the curl slides.

Finally, the Court concluded that the Board’s decision finding anticipation was based on its improper enlargement of the claims. Accordingly, the court reversed the Board’s invalidity decision and held that the patent claims were not anticipated.

The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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