The Federal Circuit agreed with the Patent Trial & Appeal Board that the claim language “form a casket body” was a structural limitation, not an intended use, and affirmed the final written decision of PTAB finding that the inter parte review petitioner failed to demonstrate that the claims were unpatentable. Matthews International Corp. v. Vandor Corp. (Fed. Cir., decided March 27, 2018).
The patent at issue is US8,104,151 and claim 1 reads as follows, with emphasis added:
1. A casket arrangement having a first configuration and a second configuration, comprising:
a bottom panel formed of a pliable material;
side panels formed intrinsically with the bottom panel of the pliable material, each side panel including a lower section and an upper section foldably attached thereto, the lower section extending vertically upward from the bottom panel, the upper section in the first configuration extending upward from the lower section and in the second configuration extending in a direction other than vertically upward from the lower section;
end panels formed intrinsically with the bottom panel of the pliable material, each end panel including a lower end panel, and an upper end panel, the lower end panel extending vertically upward from the bottom panel and fixed in position, the upper end panel in the first configuration extending upward from the lower end panel and operably coupled to the upper section of at least one side panel, and the upper end panel in the second configuration extending in a direction other than vertically upward from the lower end panel; and
wherein the bottom panel, the side panels and the end panels form a casket body at least in the first configuration.
The Federal Circuit held that the broadest reasonable interpretation of the claim language “form a casket body” is a structural limitation that defines and limits the scope of the claimed invention. The Federal Circuit arrived at this BRI at least because the detailed description disclosed that the casket body “forms a container for receiving the remains of the deceased.” In doing so, the Federal Circuit noted, “That structural terms are sometimes defined – through claim construction – by the functions they are designed to perform does not somehow convert those structural terms into ‘an intended use’ stripped of any patentable weight.”
This is yet another reminder that many benefits that result from a thorough discussion of claim language in the detailed description. On its face, the argument that “form a casket body” is merely the intended use, and not afforded patentable weight, may appear to many to be a persuasive argument. However, in this case, the description of that claim language in the detailed description supported a contrary finding by the Federal Circuit. The prior art references relied upon by the petitioner disclosed an ice chest and a frozen dough container, respectively, and the Federal Circuit concluded that the petitioner failed to show that these references “form a casket body” under the BRI of that language.