Docket No. 2011-1516, -1517
LOURIE, PROST, WALLACH
September 28, 2012
Brief summary: Explicit disclaimer of claim term meaning is not required as “the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents”.
Summary: Abbott appealed BPAI rejection of numerous claims of U.S. Pat. Nos. 6,175,752 and 6,565,509 relating to methods for in vivo monitoring of analytes on skin. Two lawsuits were consolidated and stayed pending the outcome of several reexamination proceedings, including this one. Here, the FC panel agreed with Abbott and the BPAI decision was vacated-in-part and remanded because of unreasonable claim construction of the term “electrochemical sensor” and “substantially fixed position”. The BPAI determined that in “the broadest reasonable interpretation in light of the [s]pecification, the electrochemical senor includes wires and cables” even though “the specification criticizes the external cables and wires of the prior art, and none of the embodiments in Abbott’s patents include external cables or wires” (“more express limiting statement” required (Retractable Techs., FC 2011 (“In general, statements about the difficulties and failures in the prior art, without more, do not act to disclaim claim scope.”); Teleflex, FC 2002; In re Bigio, FC 2004). Given this construction, the claims were determined to be obvious in view of at least two prior art documents. The FC panel disagreed with that construction, however, pointing to In re Suitco Surface (FC 2011) (claim should be “consistent with the specification, and…read in light of the specification as it would be interpreted by one of ordinary skill in the art”) and Philips (FC 2005) (“specification…is the single best guide to the meaning of a disputed term”), pointing out that “every embodiment disclosed in the specification shows an electrochemical sensor without external cables or wires” and “the only mention of a sensor with external cables or wires in Abbott’s patents is a single statement addressing the primary deficiency of the prior art”. Thus, the FC panel concluded that an explicit disclaimer is not required and that “the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents” (Iredeto Access, FC 2004). The BPAI decisions depending on the meaning of “electrochemical sensor” were therefore vacated and remanded for the BPAI to apply the correct claim construction. The FC panel also disagreed with the BPAI decision regarding whether the term “substantially fixed” meant that the sensor could not be moved during use and remanded that decision as well.