Jones J. Robertson and Robert M. Currie v. Jos Timmermans and Jean C Raymond (CAFC 2009-1222) precedential

Since the Board's November 2008 decision, this court has twice addressed the issue presented by this case: When a patent applicant copies claims from another application or patent to provoke an interference, and those claims are the subject of a written description challenge during the interference, which disclosure should be used to construe the claims? Our cases now clearly hold that "when a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language." Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009) (emphasis added); see also Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1335 (Fed. Cir. 2010) (quoting Agilent).

In Agilent, we examined two prior decisions of this court, In re Spina, 975 F.2d 854 (Fed. Cir. 1992), and Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997). Spina involved an appeal from an examiner's rejection of a claim for lack of written description support. We held that the claim, which had been copied from an issued patent in an attempt to provoke an interference, should be "viewed in the context of the patent from which it was copied." Spina, 975 F.2d at 856. Rowe involved an interference in which claims copied from one party's patent into the other party's application were the subject of a motion for invalidity based on prior art. We held that the Spina rule did not apply, but instead the claims should be interpreted in light of their host disclosure, just as they would during ex parte prosecution. Rowe, 112 F.3d at 479.

Agilent clarified that in interference proceedings, the Spina rule applies when a claim copied from another party's patent or application is challenged for lack of written description requirement support under § 112, ¶ 1, and the Rowe rule applies when the copied claim's validity under 35 U.S.C. § 102 or § 103 is challenged. Agilent, 567 F.3d at 1375. That is, the Board must interpret the copied claim in view of the originating disclosure for a written description challenge, and the Board must interpret the copied claim in view of the host disclosure for a validity challenge based on prior art. Id.; see also Philips, 590 F.3d at 1335.

Agilent also made clear that 37 C.F.R. § 41.200(b), under which a claim is always interpreted in view of the host disclosure, does not apply in an interference proceeding when one party makes a written description challenge to a claim that another party has copied in order to provoke the interference. See Philips, 590 F.3d at 1336; Agilent, 567 F.3d at 1375. We observe that on April 15, 2010, the PTO cancelled 37 C.F.R. § 41.200(b) and expressly stated that the Board will construe claims in an interference proceeding in a manner consistent with Agilent. See Cancellation of Rule of Practice 41.200(b) Before the Board of Patent Appeals and Interferences in Interference Proceedings, 75 Fed. Reg. 19,558 (Apr. 15, 2010).

Because Timmermans copied the claims from the Robertson patent, the Board should have construed the claims in view of the Robertson disclosure for purposes of Robertson's motion alleging that the claims were unpatentable for lack of written description under § 112, ¶ 1.

Faced with two alternative common meanings, the Board found it necessary to consult the specification to determine the proper claim construction. Applying 37 C.F.R. § 41.200(b), the Board erroneously looked to the Timmermans disclosure rather than the Robertson disclosure.

Because the Board issued its decision prior to Agilent, we think the better course is to give the Board the opportunity to apply the correct law rather than decide these issues ourselves in the first instance.

Vacated and remanded.