In Ignite USA, LLC. V. Camelback Products, LLC., No. 2016-2747 (Fed. Cir. Oct. 12, 2017), the Federal Circuit upheld the PTAB’s inter parte review claim construction that the claim term “connected” does not require a permanent connection.
As issue was US Patent 8,863,979. Representative claim 1 recites:
1. A lid assembly for a beverage container, comprising:
a lid housing having a drink aperture;
a seal arm connected to the lid housing and movable between a first position, wherein the seal arm is adjacent the drink aperture, and a second position, wherein the seal arm is distal the drink aperture, the seal arm being connected to the lid housing in the first position and the second position, the first position being an operable position for assisting in opening and closing the drink aperture, and the second position being a cleaning position wherein the drink aperture is open for cleaning the lid assembly and wherein the seal arm is not capable of assisting in closing the drink aperture in the second position;
a drink seal connected to one of the drink aperture and the seal arm to assist in sealing the drink aperture; and,
a trigger member connected to the lid housing, wherein the trigger member is capable of operating the seal arm in the first position, and wherein the seal arm cannot be operated by the trigger member in the second position.
Appellant and Patent Owner Ignite argued that the proper claim construction for “connected” should be “a connection that prevents the component from being misplaced or dissociated from the lid assembly in both the operable and cleaning positions.” Ignite sought the proposed claim construction to avoid prior art that is admittedly anticipatory without such construction. The PTAB did not adopt Ignite’s proposed claim construction, and ultimately invalidated the claims of the ‘979 patent as anticipated and obvious.The Federal Circuit affirmed the PTAB’s claim construction determination, citing the teachings of the ‘979 patent specification and the prosecution history.
Regarding the specification, the Federal Circuit pointed out that the figures of the ‘979 patent clearly depict drink seals that are disconnected from drink apertures while the drink container is in an open position. Further, the ‘979 patent specification teaches that the trigger member is “moveable radially … when the trigger member … is connected to the lid housing.” The Federal Circuit interpreted the use of “when” as indicating that the trigger member is not always connected to the lid housing.
Further, the Federal Circuit looked to statements made during prosecution of the the parent application to the ‘979 patent. During prosecution of the parent application, the Examiner had pointed out that the word “and” does not require the assembly to always be connected, but using the word “while” would require such connection. The Federal Circuit noted that the claims of the ‘979 patent used “and” instead of “while.”
Based on the intrinsic evidence used in this claim construction, the Federal Circuit declined to examine any extrinsic evince, and upheld the PTAB claim construction and invalidity decisions.
Lessons for Practice
This case provides a good example of the importance of considering the statements made during the prosecution of familial applications, and not the just patent at issue, when arguing claim construction.