Docket No. 2016-1402
PROST, DYK, STOLL
April 14, 2017
Brief Summary: Board construction of “scroll and gesture” affirmed. Its construction of “rubberbanding” and the associated finding that the prior disclosed the same vacated and remanded.
Summary: Apple appealed PTAB decision after reexamination of its US 7,844,915 relating to touchscreens, alleging the Board erred by construing “scroll or gesture” and “rubberbanding” too broadly. The Examiner rejected all of the ‘915 claims as anticipated or obvious and the Board affirmed. The Board also granted Apple’s request for rehearing but did not modify its decision and Apple appealed here. The FC panel explained “the Board’s ultimate claim constructions” in this case were reviewed de novo “because the intrinsic record fully determines the proper construction” (Microsoft, FC 2015), and given the broadest reasonable construction which “cannot be divorced from the specification and record evidence” (In re Man Mach., FC 2016). The “scroll and gesture” limitation was construed by the Board as including “‘two or more’ input points”. The FC panel noted that “Apple’s construction would replace the word ‘or’ with ‘and,’ thereby requiring all multi-input touches to be distinguished as gestures” and agreed with the Board that “a gesture operation occurs if either two input points or more than two input points are detected”. In addition, the FC panel explained that Apple’s use of “the open-ended transitional phrase ‘comprising’…undermines Apple’s suggestion that the claims are limited to a single rule” and its “reliance of the specification is also unavailing” (e.g., it does not “expressly or implicitly define the term ‘two or more’ beyond its ordinary meaning”). Thus, the FC panel agreed with the Board’s construction of “two or more”. Apple also argued the Board erroneously failed to rely on the meaning of “rubberbanding” apparently construed by the Examiner to require “sliding the content backwards in the opposite direction of the scroll”. Since the Board did not require “sliding content backwards, it found [the prior art] disclosed this limitation.” The FC panel agreed with Apple since the specification “expressly defined…the key to the rubberbanding feature is sliding content in the opposite direction of the scroll” (“[a]cting as lexicographers”). Thus, the decision was remanded to the Board for reconsideration under the proper construction of rubberbanding.