In Re Man MacHine Interface Technologies LLC
822 F.3d 1282
Fed. Cir.2016Background
- Man Machine Interface Technologies owns U.S. Patent No. 6,069,614 directed to a hand-held remote with a multi-function "thumb switch" (a center switch surrounded by an annular ring of four switches) for moving a cursor and selecting items on a screen.
- A third party requested ex parte reexamination; the PTO examiner rejected claims (1, 4, 7–10, 17) as anticipated/obvious primarily over Japanese Patent No. 58-219634 (JP ’634) and combinations including U.S. Patent No. 5,594,509 (Florin).
- The examiner and the Patent Trial and Appeal Board (PTAB) construed "adapted to be held by the human hand" and "thumb switch adapted for activation by a human thumb" broadly (e.g., covering desk-bound mice and activation by other digits/items), and affirmed the rejections.
- On appeal, the Federal Circuit concluded BRI must be reasonable in light of the specification and that the specification narrowly describes a device "designed or made to be held in the human hand" (not desk-bound) and a thumb switch sized/contoured for activation by a human thumb.
- The court reversed the PTAB's anticipation finding (JP ’634 does not disclose the properly construed "hand-held" and "thumb-activated" limitations), affirmed obviousness of claims 1, 4, 8, and 10 over Florin+JP ’634, and vacated/remanded obviousness rejections of claims 7, 9, and 17 for further proceedings under the correct constructions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of "adapted to be held by the human hand" | Term requires device be made/designed to be hand-held (excludes desk-bound) | Term is broad; includes various grasps including desk-bound mouse | Court: narrow BRI — "designed or made to be held by the human hand" (not desk-bound) |
| Proper construction of "thumb switch being adapted for activation by a human thumb" | Requires a switch sized/contoured for thumb activation (not other digits/items) | Broadly means capable of being activated by a thumb (other digits/items allowed) | Court: narrow BRI — "made or designed for activation by a human thumb" |
| Anticipation by JP ’634 | JP ’634 anticipates because it shows ring of four cursor keys around a center key | Examiner/PTAB relied on broad constructions to find anticipation | Court: reversed — JP ’634 does not disclose the properly construed hand-held and thumb-activation limitations |
| Obviousness over Florin in view of JP ’634 | Combination does not teach claimed thumb-sized annular arrangement as claimed | Florin supplies hand-held remote and thumb button; JP ’634 supplies four-switch annulus; a person of ordinary skill would combine | Court: affirmed for claims 1, 4, 8, 10 (substantial evidence supports obviousness); claims 7, 9, 17 vacated/remanded for further consideration under correct constructions |
Key Cases Cited
- Prolitec, Inc. v. Scentair Techs., Inc., 807 F.3d 1353 (Fed. Cir.) (appellate review standards for Board claim construction)
- Teva Pharm. U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S.) (review scope for claim construction and subsidiary factual findings)
- In re Yamamoto, 740 F.2d 1569 (Fed. Cir.) (claims given broadest reasonable interpretation in reexamination)
- In re NTP, Inc., 654 F.3d 1279 (Fed. Cir.) (BRI must be grounded in specification and record)
- In re Giannelli, 739 F.3d 1375 (Fed. Cir.) (interpretation of "adapted to" language)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir.) (BRI must be reasonable in light of specification)
- Schering Corp. v. Geneva Pharm., 339 F.3d 1373 (Fed. Cir.) (anticipation requires every limitation in a single reference)
- Baxter Int’l, Inc. v. 678 F.3d 1357 (Fed. Cir.) (obviousness is legal conclusion based on underlying factual findings)