{"id":2141,"date":"2018-07-13T22:22:27","date_gmt":"2018-07-14T02:22:27","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2141"},"modified":"2018-07-29T23:32:35","modified_gmt":"2018-07-30T03:32:35","slug":"unreasonably-broad-construction-unlimited-by-the-specification-resulted-in-incorrect-finding-of-anticipation","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2141","title":{"rendered":"Unreasonably Broad Construction Unlimited by the Specification, Resulted in Incorrect Finding of Anticipation"},"content":{"rendered":"

In TF3 Limited v. Tre Milano, LLC<\/a>, [2016-2285] (July 13, 2018), the Federal Circuit reversed the PTAB’s decision in\u00a0IPR2015-00649 that the claims in U.S. Patent No. 8,651,118 on a hair styling device were anticipated, holding that on the correct\u00a0claim construction, the claims are not anticipated.<\/p>\n

The Federal Circuit said that the\u00a0Board held that two references each shows\u00a0the same device as claimed in the \u2019118 Patent, rendering
\nthe claims invalid for anticipation. However, as is apparent,\u00a0the devices are not the same. The Federal Circuit said that anticipation was
\ndecided on a flawed analysis, whereby the \u2019118 Patent\u00a0claims were construed to have a breadth beyond the scope\u00a0supported by the device described in the \u2019118 Patent, the\u00a0Board then holding that the unduly broad \u2019118 Patent\u00a0claims read on the two different prior devices
\nand thus are anticipated.<\/p>\n

The Federal Circuit said that the Board declined to construe \u201cthe length of hair can\u00a0pass through the secondary opening,\u201d as set forth in the\u00a0 specification, instead ruling that in accordance with the\u00a0broadest reasonable interpretation, \u201cclaim 1 does not\u00a0require that the length of hair is allowed to slide along the\u00a0elongate member towards and subsequently off its free\u00a0end.\u201d\u00a0 The Federal Circuit found that the Board misconstrued the use of “i.e.” in the specification, explaining that the usage \u201ci.e.\u201d (\u201cid est\u201d or \u201cthat is\u201d), \u201csignals an intent to\u00a0define the word to which it refers.\u201d\u00a0 \u00a0The Federal Circuit said that the \u2019118 Patent describes the device as improving curl\u00a0retention by the structure that \u201cpermits a formed curl to\u00a0be slid off the end of the elongate member without being
\nuncurled,\u201d and neither of the allegedly anticipating references has such a structure.\u00a0 The Federal Circuit quoted itself that:<\/p>\n

The claims, of\u00a0course, do not stand alone. Rather, they are part of a\u00a0fully integrated written instrument, consisting principally\u00a0 of a specification that concludes with the claims. For that\u00a0reason, claims must be read in view of the specification, of\u00a0which they are a part.<\/p><\/blockquote>\n

The Federal Circuit concluded that\u00a0it is not reasonable\u00a0to read the claims more broadly than the description in\u00a0the specification, thereby broadening the claims to read\u00a0on the prior art over which the patentee asserts improvement.<\/p>\n

The Federal Circuit also noted that the Board\u00a0construed \u201cfree end\u201d to mean \u201can end of the\u00a0elongate member that is unsupported when the movable\u00a0abutment is in the open position,\u201d because\u00a0given their broadest interpretation, the \u2019118 Patent\u00a0claims do not require that the movable abutment operates\u00a0as described in the specification.\u00a0 Thus, the Federal Circuit observed, the Board construed the claims as “unlimited by the specification.”\u00a0 The Federal Circuit observed:<\/p>\n

Claims are construed with reference to the specification\u00a0and prosecution history, for these are the resources\u00a0by which persons in the field of the invention understand\u00a0what has been invented.<\/p><\/blockquote>\n

The Federal Circuit found that the Board’s construction was contrary to the specification, and concluded that\u00a0The \u2019118 Patent claims, construed in light of the specification,\u00a0do not read on the prior art and are not anticipated\u00a0by the prior art.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In TF3 Limited v. Tre Milano, LLC, [2016-2285] (July 13, 2018), the Federal Circuit reversed the PTAB’s decision in\u00a0IPR2015-00649 that the claims in U.S. Patent No. 8,651,118 on a hair styling device were anticipated, holding that on the correct\u00a0claim construction, … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[42,22],"tags":[],"class_list":["post-2141","post","type-post","status-publish","format-standard","hentry","category-anticipation","category-bri"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2141","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2141"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2141\/revisions"}],"predecessor-version":[{"id":2142,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2141\/revisions\/2142"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2141"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2141"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2141"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}