Tempo Lighting, Inc. v. Tivoli, LLC
742 F.3d 973
| Fed. Cir. | 2014Background
- Tivoli owns U.S. Patent No. 6,554,446 claiming a stair-step lighting apparatus with a second extruded portion that is “inert to light” (defined in the patent’s file history as “non-photoluminescent and not activated to glow by absorbing ambient light”).
- Tempo requested inter partes reexamination; the examiner initially rejected the claims and construed “inert to light” more broadly (relying on a dictionary) as a material that does not react/degrade when exposed to light or is treated with additives to prevent degradation.
- The Patent Trial and Appeal Board (Board) adopted Tivoli’s prosecution-history construction of “inert to light,” rejected the examiner’s dictionary-based construction, and reversed the examiner’s rejections of claims 1–3 and 6–13.
- The Board nonetheless relied on the examiner’s factual findings (made under the examiner’s different construction) to conclude the prior art did not disclose the claimed limitation.
- The Board also held Tempo waived alternative invalidity arguments (that certain prior art anticipates under Tivoli’s construction) because Tempo did not file a cross-appeal.
- Tempo appealed to the Federal Circuit challenging the Board’s reliance on the examiner’s factual findings and the waiver ruling; the Federal Circuit affirmed the Board’s claim construction, vacated the Board’s decision reversing the examiner (for lack of substantial evidence under the correct construction), vacated the waiver ruling, and remanded for further proceedings.
Issues
| Issue | Tivoli’s Argument | Tempo’s Argument | Held |
|---|---|---|---|
| Proper construction of “inert to light” | Term should mean what examiner’s dictionary-based definition states (non-degrading/treated to prevent degradation) | Term means as represented in Tivoli’s original prosecution: “non-photoluminescent and not activated to glow by absorbing ambient light” | Affirmed Board: construction is prosecution-history backed meaning (non-photoluminescent/not activated to glow) |
| Reliance on examiner’s factual findings made under a different claim construction | Board’s reliance on examiner’s findings is permissible | Board erred to rely on factual findings made under the examiner’s contrary construction | Vacated Board’s decision reversing examiner; remand for factual findings under correct construction |
| Waiver of alternative invalidity arguments for not cross-appealing non-adopted rejections | Tempo waived those arguments by not filing a cross-appeal | Tempo did not waive; requester may defend examiner’s final rejection on any ground supported by the record without cross-appeal | Vacated waiver ruling; Tempo may present alternative arguments on remand |
| Standard of review for claim construction and factual findings | N/A (framework issue) | N/A | Court reviews claim construction de novo and factual findings for substantial evidence; Board’s construction sustained, factual findings remanded |
Key Cases Cited
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (standard: review of Board legal conclusions and factual findings)
- In re NTP, Inc., 654 F.3d 1268 (Fed. Cir.) (claim construction is question of law)
- In re NTP, Inc., 654 F.3d 1279 (Fed. Cir.) (anticipation and prior art teachings are factual questions)
- In re Lovin, 652 F.3d 1349 (Fed. Cir.) (deference to PTO interpretation of its regulations unless plainly erroneous)
- Bell Atl. Network Servs. v. Covad Commc’ns Grp., 262 F.3d 1258 (Fed. Cir.) (limits on use of extrinsic evidence over intrinsic evidence)
- In re Morris, 127 F.3d 1048 (Fed. Cir.) (use of prosecution history as intrinsic evidence before the PTO)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim construction principles; avoid construing to preserve validity)
- Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419 (Fed. Cir.) (written description support considerations)
- Aventis Pharma S.A. v. Hospira, Inc., 637 F.3d 1341 (Fed. Cir.) (cross-appeal generally unnecessary where claims adjudicated invalid)
- Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 714 F.3d 1289 (Fed. Cir.) (cross-appeal required when a prevailing party seeks to enlarge rights under judgment)
- Rexnord Indus., LLC v. Kappos, 705 F.3d 1347 (Fed. Cir.) (a party may defend an adverse PTO decision on any ground supported by the record)