L&P Convinces Federal Circuit to Revise Board’s Overbroad Claim Interpretation

Laurence & Phillips IP Law (L&P) has prevailed in an appeal (Fed. Cir. No. 2016-2209) of two final written decisions in inter partes reviews of U.S. Patent No. 6,926,544.  The patent relates to a USB thumb drive with a rotary protective cover.  The cover spins on two protuberances on the sides of the case enclosing the electrical components of the thumb drive.  Thumb drives with such protective covers have become ubiquitous since the invention was first described in a patent application in 2002.  

The two inter partes reviews were filed by Kingston Technology Company in response to litigation commenced in 2014 in the Central District of California.  The Board concluded that Kingston had failed to prove that three of the four independent claims were unpatentable but that Kingston had proven one independent claim and some of its dependent claims unpatentable.  In the appeal, PAVO Solutions LLC argued that the Board had erred by interpreting the term “on” in some of those dependent claims too broadly.  The Federal Circuit agreed with PAVO, concluding that the Board “erred by parsing the claim language to solely focus on “on” versus “formed on” without regard to the surrounding language in the claims and the written description of the invention.” 

Matt Phillips of L&P stated, “We are pleased that the Federal Circuit has modified the Board’s overbroad interpretation of two important claims asserted in the co-pending litigation.  This case is another recent example from the Federal Circuit that the intrinsic evidence does provide meaningful limits on the breadth of the broadest reasonable interpretation and that the court will modify overbroad interpretations.”