In Re: Smith International, Inc.


Docket No. 2016-2303

LOURIE, REYNA, HUGHES
September 26, 2017

Brief summary: PTAB decision affirming examiner’s rejection based on broad reading of the claim term “body” reversed since adopting “the broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise” “is not properly giving the claim term its [BRI] in light of the specification.”

Summary: Smith appealed PTAB decision affirming examiner’s rejection of certain claims of US 6,732,817 related to an oil and gas drilling tool as anticipated or obvious following ex parte reexamination requested by Baker Hughes Inc. after Smith sued for infringement. Baker Hughes also petitioned for two IPR proceedings (IPR2016-01450 and IPR2016-01451), which were both denied institution. The FC panel opinion explains that “[t]his case primarily concerns what the word ‘body’ means in the context of the ‘817 patent”, and claimed simply as “a body”. The PTAB “affirmed the examiner’s interpretation of the term ‘body’ as a broad term that may encompass other components such as ‘mandrel’ and ‘cam sleeve,’ reasoning that only the term ‘body’ is recited in the claims without further limiting features and that the specification neither defines the term ‘body’ nor prohibits the examiner’s reading of it” (“a ‘generic term such as ‘member’ or ‘element’ that by itself provides no structural specificity”, and given its broadest reasonable interpretation), “rejected Smith’s argument that” the term would be understood to be “a distinct element from other components”, and therefore the examiner’s rejections. The FC panel explained that the PTAB’s legal determinations are reviewed de novo (In re Elsner, FC 2004) for substantial evidence (that which “a reasonable mind might accept as adequate” (In re Gartside, FC 2000)), anticipation is a question of fact also reviewed for substantial evidence (REG Synthetic Fuels, FC 2016), and obviousness is a question of law based on underlying factual findings (In re Magnum Oil, FC 2016). Smith argued the PTAB’s interpretation was unreasonable, that the specification provided a “consistent description of the body” (“as an ‘outer housing’”) which is supported by the prior art, and that it “renders the term indistinguishable from ‘tool’, which is used in the specification to denote the overall drilling tool.” The FC panel agreed the PTAB’s construction was “unreasonable”, explaining that BRI “‘does not include giving claims a legall incorrect interpretation’ ‘divorced from the specification and the record evidence’” (Microsoft, FC 2015; PPC Broadband, FC 2016). “The correct inquiry” under the BRI “is an interpretation that is not inconsistent with the specification” and “corresponds with what and how the inventor describes his invention in the specification” (In re Morris, FC 1997; In re Suitco Surface, FC 2010). The FC panel explained that adopting “the broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise” “is not properly giving the claim term its [BRI] in light of the specification.” Since the affirmed rejection relied upon that improperly broad reading of “body”, the PTAB’s decision was reversed.

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