894 F.3d 1366
Fed. Cir.2018Background
- TF3 Limited appealed the PTAB’s finding that claims 1–5 and 11 of U.S. Patent No. 8,651,118 were anticipated by prior art (Gnaga and Hoshino) following an inter partes review requested by Tre Milano, LLC.
- The ’118 Patent claims a hair-styling device where a strand is wound around an elongate member, heated, and the curled hair "slides along the elongate member towards and subsequently off its free end" through a secondary opening without being forced to uncurl; a movable abutment retains/releases the hair.
- The PTAB construed key claim terms broadly: it defined “free end” as an end unsupported when the abutment is open and held that the claim did not require the hair to slide along the elongate member and off the free end to exit.
- Based on that broad construction, the PTAB found Gnaga and Hoshino anticipated the asserted claims because those prior-art devices showed curlers that are ejected or disassembled to remove hair.
- The Federal Circuit held the PTAB erred by construing the claims broader than permitted by the specification, particularly for the terms “the length of hair can pass through the secondary opening” and “free end,” and reversed the anticipation finding.
Issues
| Issue | Tre Milano (Petitioner) Argument | TF3 (Patent Owner) Argument | Held |
|---|---|---|---|
| Proper construction of “the length of hair can pass through the secondary opening” | Claims need not require hair to slide along and off the elongate member; plain claim language is broad | Spec. requires the styled hair to slide along the elongate member and off its free end through the secondary opening (to avoid uncurling) | Court: Spec. uses “i.e.” to define the mode—claims limited to sliding off the free end; PTAB erred in broad reading |
| Meaning of “free end” of elongate member | A curler is “free” when unsupported (so prior art curlers can have a free end) | “Free end” is an end over which the curl slides; it is distinct from and not supported by the movable abutment as described in the spec. | Court: PTAB’s notion that abutment can structurally support the free end contradicts the specification; adopt TF3’s reading |
| Whether Gnaga anticipates the claims | Gnaga’s device shows the same elements under PTAB’s broad constructions | Gnaga lacks an elongate member configured so the curl slides off the free end through a secondary opening without ejection/disassembly | Court: Gnaga does not disclose the claimed arrangement and operation; not anticipating |
| Whether Hoshino anticipates the claims | Hoshino teaches every claimed element under PTAB’s constructions | Hoshino removes curls via ejection/unwinding, not by sliding off a free end through a secondary opening as claimed | Court: Hoshino does not disclose the claimed arrangement and operation; not anticipating |
Key Cases Cited
- In re Spada, 911 F.2d 705 (Fed. Cir.) (prior art must place the public in possession of the claimed invention)
- PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747 (Fed. Cir.) (broadest reasonable interpretation must be reasonable in light of claims and specification)
- Enzo Biochem Inc. v. Applera Corp., 780 F.3d 1149 (Fed. Cir.) (claims cannot be construed to include subject matter contrary to the specification)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claims read in view of the specification; claims do not stand alone)
- Richardson v. Suzuki Motor Co., 868 F.2d 1226 (Fed. Cir.) (anticipation requires identical invention disclosed in as complete detail as in the patent)