CAFC: Obviousness and Non-Limiting Reference Numerals in Claims: Grit Energy Solutions, LLC v. Oren Technologies, LLC.

The Federal Circuit, in vacating the Patent Trial and Appeal Board’s (PTAB) decision in an inter partes review (IPR) that claims in a patent were not obvious, held that, for an obviousness inquiry, reference numerals in the claims “do[] not limit the disclosure of the claims.” Grit Energy Solutions, LLC v. Oren Technologies, LLC, 2019-1063 (Fed. Cir. Apr. 30, 2020) (patent-in-suit is U.S. Patent No. 8,585,341).

The ‘341 patent “requires (a) the container to have a gate with a pin fixedly affixed thereto, and (b) the support structure to have an actuator with a receptacle.” During the IPR, Grit Energy argued that the ‘341 patent was obvious over U.S. Patent No. 7,252,309 and French Patent Application No. 2,640,598. The court noted that it is undisputed that the ‘309 Patent “discloses the opposite of the ‘341 configuration,” and the ‘598 application’s “non-limiting example, standing alone, discloses the opposite of the ‘341 configuration.” However, the parties disputed whether claim 5 of the ‘598 application discloses the ‘341 configuration. Claim 5 of the ‘598 application is reproduced here.

5. Device according to any one of the preceding claims, characterized in that the mechanical connecting means of the shutter are constituted by at least one stud (15) provided on one of the shutter blades (8) that lodges in a corresponding orifice (16) of the blade of the other shutter.

Grit Energy argued before the PTAB that the reference numerals did not limit the disclosure of claim 5 and, therefore, “the stud and orifice can each be on either shutter blade.” The PTAB found that claim 5 was limited to “disclosing only ‘stud 15 provided on shutter blade 8, which is attached to its actuator” (emphasis in original) because unlike other claims of the ‘598 application, “which explicitly recite shitter blade 8 and shitter blade 9, claim 5 recites only shutter blade 8.” (emphasis in original). Therefore, the PTAB held that the ‘598 application did not disclose the ‘341 configuration and that Grit Energy had failed to satisfy its burden to show the claims were unpatentable.

In this case, the court found that the PTAB improperly limited the disclosure of the ‘598 application to include only “stud 15 provided on shutter blade 8.” The court first noted that the ‘598 application “expressly describes the referenced embodiment as a ‘non-limiting example.’” The court then explained that “[t]he claims are broader than what is depicted by the non-limiting embodiment.”

The court found that that the inclusion of reference numerals in the claims of the ‘598 application did not “limit the disclosure provided by the claims to that non-limiting example, but rather [mapped] the embodiment to the claims.” Specifically, the court noted that “[t]he mere fact that a non-limiting example was mapped to [the ‘598 application’s] claim 5 does not detract from its clear disclosure that the stud ‘is provided on one of the shutter blades’ and the orifice is provided on ‘the blade of the other shutter.’” The court further noted that “in mapping the non-limiting example to the claims, it would have been inappropriate to reference both shutters as opposed to only the particular shutter of the non-limiting embodiment that included the stud.”

Here, the Federal Circuit concluded that the PTAB’s “determination that [the ‘598 application] does not disclose the ‘341 configuration is unsupported by substantial evidence.” Therefore, the court vacated the PTAB’s decision and remanded for further proceedings.

In a dissenting opinion, Judge Newman objected to the majority “edit[ing] claim 5 of [the ‘598 application] to remove its reference numerals to the structure in the specification.” Judge Newman noted that the ‘598 application “is explicit as to the placement of the stud and orifice relative to the actuation,” and “no alternative is described or suggested as to the element for which the court rewrites the [‘598 application] by removing the reference numerals from claim 5.” Judge Newman stated that “[i]t is inappropriate to edit a reference to remove its explicit limitation, and then to apply the judicially-enlarged disclosure as prior art.”

Lessons for Practice

The Manual of Patent Examining Procedure (MPEP) sets forth that, during prosecution, reference characters included in a claim have no effect on the scope of the claim. MPEP §608.01(m). As this case illustrates, reference characters in the claims of a prior art reference also do not limit the disclosure of the prior art during prosecution. In other words, a patentability argument that reference characters in a claim limit the scope of the claim will not be successful. However, it is important to remember that reference characters in a claim could prevent a finding of infringement, where literal infringement of each claim element is required. Since including reference characters in the claims provides no benefit during prosecution and can limit enforcement, it is best to keep reference characters out of the claims whenever possible.