In Re: Smith International, Inc.
871 F.3d 1375
| Fed. Cir. | 2017Background
- Smith International owns U.S. Patent No. 6,732,817 directed to an expandable downhole underreamer/stabilizer with a claimed "body" and non-pivotable moveable arms. Independent claims at issue include claims 28, 43, and 93.
- Baker Hughes requested ex parte reexamination of certain claims; the PTO examiner rejected many claims based primarily on prior art Eddison (and combinations with Jewkes and Wardley). The Board affirmed the examiner's rejections.
- Central dispute on appeal: the proper claim construction of the term "body" — whether it is a generic, catch‑all term that can encompass internal components (mandrel, cam sleeve) or a distinct outer housing component as described in the specification.
- The Board adopted a broad construction of "body," permitting inclusion of Eddison's mandrel/cam sleeve in the claimed "body," which supported findings of anticipation and obviousness. Smith argued the specification consistently treats "body" as a discrete component separate from internal parts.
- The Federal Circuit reviewed claim construction de novo and factual findings for substantial evidence, and reversed, holding the Board's construction unreasonably broad because it conflicted with the specification's consistent descriptions separating the "body" from other components.
Issues
| Issue | Smith's Argument | PTO/Baker Hughes Argument | Held |
|---|---|---|---|
| Proper construction of "body" in the patent claims | "Body" means the outer housing or discrete component distinct from mandrel, piston, drive ring | "Body" should be given its broadest reasonable interpretation and can encompass internal elements (mandrel, cam sleeve); claims recite only "a body" so broad reading is proper | Reversed Board: "body" must be interpreted consistent with the specification as a component distinct from other separately described parts; Board's broad construction was unreasonable |
| Anticipation by Eddison given Board's construction | Not anticipated if "body" cannot include Eddison's internal parts | Anticipated because Eddison's combination of mandrel/cam sleeve with body meets claim limitations under Board's construction | Rejected Board's anticipation finding because it relied on incorrect claim construction; substantial evidence lacking |
| Obviousness over Eddison ± Jewkes/Wardley | Claims not obvious once "body" is properly construed | Obvious in view of Eddison and combinations under Board's broad construction | Reversed Board's obviousness findings for same reason as anticipation; additional refs do not supply missing elements |
| Proper application of broadest reasonable interpretation standard | Must be consistent with how inventor describes invention in specification; cannot adopt construction divorced from specification | Broadest reasonable interpretation permits reading "body" broadly absent explicit lexicography | Court: Broadest‑reasonable test requires consistency with specification; Board erred applying an overly broad, specification‑divorced construction |
Key Cases Cited
- In re Elsner, 381 F.3d 1125 (Fed. Cir.) (standard of review for claim construction in PTO appeals)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (substantial evidence standard for factual findings)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir.) (BRI cannot produce legally incorrect constructions divorced from specification)
- In re Morris, 127 F.3d 1048 (Fed. Cir.) (claim construction must correspond with how inventor describes invention in specification)
- In re Suitco Surface, 603 F.3d 1255 (Fed. Cir.) (specification constrains broadest reasonable interpretation)
- Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir.) (anticipation requires every element in single prior art reference)
- REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954 (Fed. Cir.) (anticipation reviewed for substantial evidence)