Federal Circuit Panel Wants Review Of PTO Claim Construction Weight

Los Angeles – The Federal Circuit on Tuesday called for more clarity in determining the proper standards with which it should weigh claim construction decisions made in the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, with a majority panel opinion that asked for en banc review of its own decision.

The immediate case on appeal involved a bid by Flo Healthcare Solutions LLC to overturn a PTAB decision that upheld a PTO examiner’s rejection on reexamination of numerous claims of its patent for a mobile computer workstation intended for use in medical care environments. Flo originally sued Rioux Vision Inc. in Georgia federal court for infringing the patent, and Rioux initiated the reexamination proceeding that led to the current appeal.

The Federal Circuit affirmed the board’s conclusion, but got there by a different route, saying the board’s analysis was incorrect.

“Based on our review of the record, we are satisfied that the factual determinations underlying the board’s decision are supported by substantial evidence, and that the board came to the correct legal conclusions based on those facts,” the majority opinion, authored by Circuit Judge S. Jay Plager, said.

The decision, though, intentionally elided the question of the standard of review the Federal Circuit should apply to the board’s claim construction decisions, Judge Plager said.

“Whichever way this court’s review rule should be cast, and for whatever reasons, it is perhaps time that the court definitively decide en banc on an agreed review standard, one that provides clear direction to the PTO and the inventor community,” he said in additional views filed alongside the three-judge panel’s opinion.

Although the review standard may not always dictate the result, as a matter of basic law there should be one standard uniformly applied by the court to Board claim constructions, Judge Plager said.

“When, as here, there exists an unnecessary lack of clarity in our rules, I believe we have an obligation as a court to address the problem and, if possible, correct it,” Judge Plager.

One of the principal purposes behind the creation of the Federal Circuit was to provide national uniformity in patent matters, and a uniform standard for review of claim construction matters, regardless of the forum whose decision is being appealed, would be consistent with that purpose, he said.

Circuit Judge Pauline Newman agreed in her own additional views, saying that the goal of uniformity underlying the Federal Circuit’s genesis “is being undermined by a hodgepodge of procedural rulings, inferences, and presumptions that ignore the routine mechanisms of patent examination, that confound the standards of review, and that misapply the principles of administrative deference.”

“The loser is the technology community, whose incentive for innovation and commerce the patent system serves,” she said.