The Originating Disclosure Should Be Used to Construe Claim Terms in a Written Description Challenge in Interference Proceedings

Koninklijke Philips Electronics N.V. v. Cardiac Sci. Operating Co., No. 2009-1241 (Fed. Cir. Jan. 5, 2010)

Holding:

When a party challenges written description support for the copied claim in interference proceedings, the originating disclosure provides the meaning of the pertinent claim language. Slip op. at 14.

In contrast, when a party challenges a claim’s validity, the claims are interpreted in light of the specification in which they appear. Id.

Relevant Facts:

Cardiac Science invoked the interference by copying certain claims from Philips’ earlier patent to its application. The BPAI denied several Philips’ motions and awarded priority to Cardiac Science’s patent application. Philips sought the review of the BPAI’s decision in a district court, but the district court later dismissed Philips’s civil suit sua sponte. Philips appealed and the Federal Circuit reversed and remanded the case back to the district court. The main dispute is which specification should be used to construe claim meanings when Philips challenged that Cardiac Science’s copied claims lack written description support.

Comments:

The Federal Circuit reiterated its holdings in Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009) and In re Spina, 975 F.2d 854 (Fed. Cir. 1992). In patent inference proceedings, the original specification is relevant to a written description support challenge, while the specification in which the claims appear is relevant to a validity challenge. Note that without written description support, the inference proceeding cannot go forward.