Docket No. 2017-1295, -1297 (IPR2015-00841, -00842)
PROST, NEWMAN, MOORE
April 19, 2018
Brief summary: PTAB’s findings of anticipation and obviousness following IPR reversed based on FC panel’s revised claim construction.
Summary: Wonderland (WL) appealed two IPR decisions finding the claims of RE43,919 related to “an easy to assemble baby crib” anticipated and/or obvious based on the construction of “a fabric member” as meaning “one or more pieces of fabric” and an “enclosure member” as meaning “one or more members.” The FC panel explained that it reviews the PTAB’s “legal determinations de novo and its fact findings for substantial evidence” (CRFD, FC 2017 (anticipation being a question of fact)), and that claim construction is “review[ed] de novo except for subsidiary fact findings, which [it] review[s] for substantial evidence” (Perfect Surgical, FC 2016; PPC Broadband, FC 2016 (the PTAB “gives claims their broadest reasonable interpretation consistent with the specification”)). The FC panel explained that the PTAB’s “construction allow for the claimed crib to have multiple fabric members and enclosure members” which is “inconsistent with the use of the terms in the claims”. The FC panel acknowledging that “the use of the singular articles ‘a’ and ‘an’ often means ‘one or more’ when the transitional phrase ‘comprising’ is used”, but found here that “[t]he ordinary language of the claims indicates that a single fabric or enclosure member is capable of separating the interior of the claimed crib from the exterior” (and this is “consistent with the examples disclosed in the specification”). The FC panel also found that “the prosecution history does not support the Board’s construction”, even though WL “amended reissue claim 8 during prosecution to remove the express limitation that the enclosure member was ‘formed in a single body, and amended reissue claim 20 to remove the express limitation that the plurality of side panels be ‘connected [to] one another laong joining edge portions.” The PTAB “determined these amendments indicated an intention to not limit the claims to cribs with only a single enclosure member” but the FC panel found that “[r]ather than broadening the claims, these amendments sought to distinguish from the prior art.” The FC panel also found that the PTAB’s “alternative finding that the claims are unpatentable under” this construction is “not supported by substantial evidence” since the prior art did not teach this limitation (e.g., one reference relied on by the PTAB “does not indicate that the netting is a single, continuous member”). And the FC panel did not accept “Baby Trend’s argument that the Board inherently adpopted its expert testimony” since “[w]hen the Board intends to rely on extrinsic evidence, it does so expressly” and BT “may not rely on statements made by Administrative Patent Judges at the oral hearing that were not included in the Board’s written decisions.” Based on the FC’s claim construction, then, the PTAB’s findings of anticipation and obviousness were reversed.