Issue 06/52 | October 10, 2006
Federal Circuit Not Bound by PTO's Reexamined Claim Construction
Bicycle diagram

In SRAM Corp. v. AD-II Engineering, Inc. (October 2, 2006), Federal Circuit Judge Linn confirmed that the Federal Circuit gives no deference to the reexamined claim construction of the U.S. Patent and trademark Office:

SRAM also urges that we adopt the district court's construction of claim 16 as providing for "precision indexed downshifting" on the ground that, after three reexamination proceedings, the Patent Examiner—like the district court—construed claim 16 as providing "precision indexed downshifting" as a means to take up lost motion, and confirmed its patentability over prior art gear-shifting devices that require a user to manually overshift. This argument is not persuasive. While the Patent and Trademark Office (the "PTO") generally gives claims their broadest reasonable interpretation consistent with the specification, see In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990), paradoxically in this case, the PTO construed the claim narrowly, rather than broadly, by reading in the same limitation as did the district court. In doing so, the PTO erred for the same reasons as did the district court. The Patent Examiner's actions thus provide no support for SRAM's argument. Furthermore, this court is not bound by the PTO's claim interpretation because we review claim construction de novo interpretation consistent with the specification, see In re American Academy of Science Tech Center. Cybor Corp., 138 F.3d at 1456.

For more information on this topic, please contact William F. Heinze (bill.heinze@tkhr.com) at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

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