Where the principal argument to the PTO about the proper interpretation of a claim term is consistent with a previous judicial interpretation, the PTO is obligated to acknowledge that interpretation and assess whether it is consistent with the broadest reasonable interpretation standard. Here, for example, a prior district court construction of the claim term “coupled” was found to be improperly ignored by the PTO in its broader interpretation of the same term. “The fact that the board is not generally bound by a previous judicial interpretation of a disputed claim term does not mean, however, that it has no obligation to acknowledge that interpretation or to assess whether it is consistent with the broadest reasonable construction of the term.” This would be a good case to consult and cite when advocating for a broadest reasonable interpretation that is consistent with a previous judicial interpretation.
Background / Facts: The patent on appeal here from rejection at the PTO during reexamination is directed to reducing electromagnetic interference by jittering the switching frequency of a switched mode power supply. During prior litigation, a district court had found that the term “coupled” in claim 1 did not “require a direct connection or … preclude the use of intermediate circuit elements,” but did require that two circuits be connected in a manner “such that voltage, current, or control signals pass from one to another.” During reexamination, however, the PTO did not acknowledge the district court’s claim construction or assess whether such an interpretation of the term “coupled” was consistent with its broadest reasonable interpretation standard. Instead, the PTO focused only on whether “coupling” required a direct or indirect connection.
Issue(s): Whether the PTO erred in failing to address the district court’s previous interpretation of the term “coupled” as espoused by the patentee.
Holding(s): Yes. “The fact that the board is not generally bound by a previous judicial interpretation of a disputed claim term does not mean, however, that it has no obligation to acknowledge that interpretation or to assess whether it is consistent with the broadest reasonable construction of the term.” While taking care to make clear that it “do[es] not hold that the board must in all cases assess a previous judicial interpretation of a disputed claim term,” the court noted that because here the “principal argument to the board about the proper interpretation of the term ‘coupled’ was expressly tied to the district court’s claim construction, we think that the board had an obligation, in these circumstances, to evaluate that construction and to determine whether it was consistent with the broadest reasonable construction of the term.”