This сase presents once again the issue of which patent disclosure in an interference proceeding should be used to construe claims copied by one party from another party’s patent or patent aрplication when the claims are the subject of a written description challenge. In this case, Jos Timmermans and Jean C. Raymond (collectively, “Timmermans”) provoked an interference by copying claims into their patent application from a patent issued to Jones J. Robertson and Robert M. Currie (collectively, “Robertson”). During the interference proceeding before the Board of Patent Appeals and Interferences (“Board”), Robеrtson filed substantive preliminary motions alleging that the copied claims were unpatentable for lack of written description support as required by 35 U.S.C. § 112, ¶ 1. The Board denied the motions and ultimately cancelled claims of Robertsоn’s patent because the Timmermans application had priority. Because the Board erred in construing Timmermans’s claims in view of Timmermans’s disclosure rather than Robertson’s disclosure, we vacate the Board’s decision and remand for further proceedings consistent with this opinion.
BACKGROUND
Robertson’s patent, U.S. Patent No. 6,860,628 (“'628 patent” or “Robertson patent”), relates to light-emitting diode (“LED”) replacement tubes for conventional fluorescent light tubes. The '628 patent issued on March 1, 2005, and has a priority date of July 17, 2002, the filing date of Robertson’s patent application.
The Timmermans patent application involved in the interference is U.S. Patent Application No. 11/085,744 (“'744 application” or “Timmermans application”), filed on March 21, 2005. Timmermans claims priority to a parent application, filed on February 12, 2001, and a provisional application, filed on February 11, 2000.
To provoke an interference, Timmermans cоpied claims 1 and 4 of Robertson’s patent into the '744 application as claims 8 and 9. In October 2007, the United States Patent and Trademark Office (“PTO”) declared an interference under 35 U.S.C. § 135(a). Because the Timmermans applicаtion claims the benefit of an earlier filing date than Robertson’s filing date, the Board identified Timmermans as the senior party and Robertson as the junior party-
The Board formulated one count for the interference, identical to claim 1 of the Robertson patent and claim 8 of the Timmermans application. The count reads:
1. An LED lighting unit for replacing a conventional fluorescent tube between the opposed electrical receptaсles of a conventional fluorescent lighting fixture, comprising:
a solid, rigid, translucent rod having a first end and a second end opposite said first end;
a first end cap disposed upon said first end of said rod, and a second end cap disposed upon said sеcond end of said rod;
a pair of parallel, fluorescent light fixture receptacle connectors extending from each said end cap, and configured for installing within the opposed electrical receрtacles of the fluorescent lighting fixture; and
a plurality of LEDs disposed along said rod, in electrical contact with one another and with at least said pair of connectors extending from at least one said end cap.
'628 patent col.14 ll.16-32 (emphasis added). This count corresponds to Robertson’s claims 1 and 4 and Timmermans’s claims 8 and 9.
During the interference proceedings before the Board, Robertson filed three substantive preliminary motions. In Motion 1, Robеrtson alleged that Timmermans’s claims corresponding to the interference count, claims 8 and 9, are unpatentable for lack of written description support as required by 35 U.S.C. § 112, ¶ 1. Relevant to this appeal, Robertson contеnded that the Timmermans application does not provide an adequate written description of the claimed “solid, rigid, translucent rod.” In Motion 2, Robertson alleged that Timmermans is not entitled to priority based on his earlier parеnt application and provisional application because those applications lack sufficient written description for the subject matter of the interference count. This was essentially the same argument made in Motion 1 because all the Timmermans applications have the same written description. Robertson’s Motion 3 is not at issue in this appeal.
The Board denied all of Robertson’s motions in a November 2008 decision. 1 A central issuе with respect to Motions 1 and 2 was the meaning of the term “solid” when used to modify “rod.” Timmermans argued that the term means the rod is in its solid physical state and not its liquid or gaseous state; Robertson argued that it means the rod is “an object that is continuous, full of matter, and not hollow within the general outlines of its shape.” To determine the correct construction of Timmermans’s claims 8 and 9, the Board applied 37 C.F.R. § 41.200(b), a PTO regulation governing claim construction in interference proceedings. Under that rule, a “claim shall be given its broadest reasonable construction in light of the specification of the application or patent in which it appears.” 37 C.F.R. § 41.200(b) (2009) (emphasis added). Thus the Board looked to Timmermans’s written description, which does not use the term “solid” to describe or refer to anything. As the Board noted, Timmermans “discloses only a light tube embodiment with a hollow bulb portion within which LEDs are disposed and nowhere discusses or refers to an еmbodiment which does not position LEDs within a hollow and translucent structure.” 2 The Board concluded that the broadest reasonable construction of “solid” in light of the Timmermans specification is that “the rod is in its solid physical state rather than its liquid or gaseous state.” 3 Given this claim construction, the Board found that Robertson failed to show that claims 8 and 9 were unpatentable for lack of written description support as required by § 112, ¶ 1.
Robertson did not allege a date of conception or reduction to practice earlier than the benefit dates accorded to Timmermans. Therefore, as the Board stated, there was no need for a priority motions phase in the interferencе. The Board accordingly entered judgment against Robertson and cancelled claims 1 and 4 of the '628 patent. 4
DISCUSSION
Since the Board’s November 2008 decision, this court has twice addressed the issue presented by this case: When a patent applicant copies claims from another application or patent to provoke an interference, and those claims аre the subject of a written description challenge during the interference, which disclosure should be used to construe the claims? Our cases now clearly hold that “when a party challenges written description support for an intеrference count or the copied claim in an interference,
the originating disclosure provides the meaning of the pertinent claim language.” Agilent Techs., Inc. v. Affymetrix, Inc., 567
F.3d 1366, 1375 (Fed. Cir.2009) (emphasis added);
see also Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Opеrating Co.,
In
Agilent,
we examined two prior decisions of this court,
In re Spina,
Agilent
clarified that in interference proceedings, the
Spina
rule applies when a claim copied from anоther party’s patent or application is challenged for lack of written description requirement support under § 112, ¶ 1, and the
Rowe
rule applies when the copied claim’s validity under 35 U.S.C. § 102 or § 103 is challenged.
Agilent, 567
F.3d at 1375. That is, the Board must interprеt the copied claim in view of the originating disclosure for a written description challenge, and the Board must interpret the copied claim in view of the host disclosure for a validity challenge based on prior art.
Id.; see also Philips,
Agilent
also mаde clear that 37 C.F.R. § 41.200(b), under which a claim is always interpreted in view of the host disclosure, does not apply in an interference proceeding when one party makes a written description challenge to a claim that another party has copied in order to provoke the interference.
See Philips,
In the case before us, the Board, without the benefit оf this court’s decisions in
Agilent
and
Philips,
construed the term “solid, rigid, translucent rod” in Timmermans’s claims 8 and 9 in light of the Timmermans written description. This was erroneous as a matter of law. Because Timmermans copied the claims from the Robertson patent, the Bоard should have construed the claims in view of the Robertson disclosure for purposes of Robertson’s motion alleging that the claims were
Timmermans argues that the Board’s failure to apply the Spina rule is immaterial because both рarties relied on common dictionary definitions of “solid” without reference to either written description. The Board, however, did not simply choose between the parties’ competing definitions. Faced with two alternative сommon meanings, the Board found it necessary to consult the specification to determine the proper claim construction. Applying 37 C.F.R. § 41.200(b), the Board erroneously looked to the Timmermans disclosure rather than the Robertsоn disclosure.
Timmermans further contends that we can affirm the Board’s decision because the Board’s claim construction is consistent with Robertson’s disclosure as well as Timmermans’s disclosure. At the same time, Robertson urges us to construe thе claims in his favor in view of the disclosure in the Robertson patent, find that the Timmermans application does not provide sufficient written description support for claims 8 and 9 as properly construed, and conclude there wаs no interference-in-faet between the Robertson patent and the Timmermans application.
Because the Board issued its decision prior to Agilent, we think the better course is to give the Board the opportunity to apply the correct law rather than decide thesе issues ourselves in the first instance. On remand, the Board should construe Timmermans’s claims 8 and 9 in light of the Robertson patent and then determine whether the claims, properly construed, have sufficient written description support in the Timmermans application.
Accordingly, we vacate the Board’s decision, including its cancellation of claims 1 and 4 of the '628 patent and its denial of Robertson’s Motions 1 and 2 on the ground that claims 8 and 9 of the '744 application are unрatentable for lack of written description support as required by § 112, ¶ 1, and remand for further proceedings as described herein.
CONCLUSION
VACATED and REMANDED
COSTS
Each party shall bear its own costs.
Notes
.
Robertson
v.
Timmermans,
Patent Interference No. 105,602,
. Board Decision at 12.
. Id. at 16.
. Robertson v. Timmermans, Patent Interference No. 105,602 (B.P.A.I. Nov. 21, 2008) ("Judgment”). The Board at first mistakenly cancelled all claims of the '628 patent. The text was corrected to cancel only claims 1 and 4 in an erratum dated December 16, 2008.