Can a court construe two different terms in two different claims the same way? If the specification uses those phrases in the same way, then yes. In Pavo Solutions, LLC v. Kingston Technology Company, Inc., Nos. 2016-2209, 2016-2328, 2016-2391, 2017 U.S. App. LEXIS 22112 (Fed. Cir. Nov. 6, 2017) (nonprecedential), the Federal Circuit held that the terms “on” and “formed on,” in the context of the surrounding language in the claims and the text of the specification, should be construed with the same definition.
Plaintiff owns patents on USB drives with rotating covers. Two of the asserted claims include similar language: “a hinge protuberance on at least one side of the case” and “a hinge protuberance formed on at least one side of the case.” Plaintiff argued that both terms should be construed as requiring the protuberance to be attached to or integrated into the side of the case. The Patent Trial and Appeal Board (“Board”), in determining that the claims were obvious in an inter partes review, construed the term “on” to indicate the relative position of the protuberance, regardless of how the protuberance was attached to the case, and the term “formed on” to specify integration and attachment of the protuberance onto the case.
The Court, reviewing de novo, held that the Board erred in distinguishing “on” and “formed on.” The Court held that the Board “reached an unreasonably broad reading” of the terms and “created a distinction that does not exist in the specification.” The specification used the terms “on” and “formed on” interchangeably to describe the protuberance integrated with the side of the case. The terms may be literally different, but the context of the language of the claims and the specification “does not give rise to the substantive distinction the Board found.”
Lessons for Practice
The Federal Circuit continues to emphasize that claim terms must be construed in the context of the specification. These recent cases can be useful in appeals during prosecution to force reversal of unreasonably broad claim construction. During prosecution, ensure that the desired claim scope aligns with the use of those terms in the specification, and draft specifications accordingly.