881 F.3d 1371
Fed. Cir.2018Background
- Nordt appealed the PTAB’s affirmance of an examiner’s rejection of claims 1 and 14 of U.S. Patent Application No. 13/241,865 for anticipated prior art (Gildersleeve).
- The claimed invention is an elastic knee brace with a hinge assembly including an injection molded strut and injection molded arm components, and a framework "injection molded about" those components.
- Examiner and PTAB treated the phrase "injection molded" as a process limitation (product-by-process) and refused to give it patentable weight, finding the prior art’s fabric-based sleeve anticipated the claimed product.
- Nordt argued "injection molded" conveys a structural limitation (integral relationship of components) and therefore should be considered when assessing patentability.
- The Federal Circuit held that "injection molded" can connote structure, vacated the Board’s anticipation finding based on its incorrect claim construction, and remanded for the Board to construe the limitation in the first instance.
Issues
| Issue | Plaintiff's Argument (Nordt) | Defendant's Argument (USPTO/PTAB/Examiner) | Held |
|---|---|---|---|
| Whether "injection molded" in the claims is a process-only limitation or a structural limitation | "Injection molded" describes structural relationship/integral construction between framework and strut/arms and thus imparts patentable structure | It is a method-of-manufacture limitation in a product-by-process claim and carries no patentable weight; anticipation can be based on the finished product regardless of manufacturing method | Court held "injection molded" can connote structure; Board erred by treating it as process-only and must construe it on remand |
| Whether the Board may presume process-character without considering specification and claim language | Nordt: specification and claim language show structural meaning; presumption improper | Board: defaulted to treating process limitations in product claims as lacking patentable weight | Court: Board conflated two inquiries and should have examined whether term conveys structure; remand required |
| Whether the prior art (Gildersleeve) anticipates when manufacturing method differs (fabric vs injection molding) | Nordt: structural difference (integral injection-molded construction) distinguishes claims from Gildersleeve | Examiner/PTAB: prior art discloses finished-product features (flexible elastomeric web) sufficient for anticipation despite different manufacturing | Court: vacated anticipation because it was based on incorrect claim construction; anticipation unresolved pending proper construction |
| What evidentiary showing was required to treat the term as structural | Nordt: specification and representations suffice; no need for extra evidence beyond intrinsic record | Board: required Nordt to explain specifically what structural limitation arises from "injection molded" | Court: intrinsic record (claims + spec) shows structural connotation; Board must now define precise structural meaning on remand |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard of review for claim construction when intrinsic evidence only)
- In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985) (product-by-process claims: patentability typically based on product, not process)
- In re Garnero, 412 F.2d 276 (CCPA 1969) (process language that connotes structure must be considered as structural limitation)
- 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365 (Fed. Cir. 2003) (terms capable of describing structure or process are by default interpreted structurally absent contrary patentee indication)