In the Final Written Decision in L&P Property Management Company v. National Products Inc., the PTAB construed the terms “molded docking station,” “molded wall,” and “molded apparatus body” as product-by-process limitations. The PTAB based this conclusion largely on intrinsic evidence, and since the specification primarily described “molded” in terms of the process by which the part is made, as opposed to the structural characteristics of a part that is formed by molding, the PTAB concluded that “molded” is a product-by-process limitation.
Claim 1 reads, in part,
1. A molded docking station for laptops, mini-laptops, notebooks, netbooks, and ultra mobile personal computers (UMPCs), the docking station adapted for mounting in vehicle applications and comprising:
a housing comprising:
a molded wall,
a device bearing surface on a first portion of an outer surface of the wall between opposing side edges thereof,
an expansion connector presentation edge of the wall positioned adjacent to a rear portion of the device bearing surface between the opposing side edges of the wall, and…
The patent holder argued that “molded” should be construed as an adjective describing structure because an ordinary skilled artisan would have recognized that a molded part is structurally different than a corresponding non-molded part because a molded part is made of a single, uniform piece of material with no seams, joints, fasteners, or adhesives holding it together.
The PTAB concluded that “molded” is not structural because the specification describes “molding” in terms of processes, rather than particular structures that result from a process. As one example, the PTAB noted that dependent claim 10 recites “the device receiver structure is integrally molded with the molded wall.” the PTAB stated that using “integrally” as an adjective to “molded,” “ shows that the patentee knew how to expressly claim characteristics in the absence of express claim language.”
The PTAB did consider expert testimony, but was unpersuaded that the testimony was conclusive that “molded” is structural. The PTAB did note that some of the expert testimony described “molded” in terms of the process, and “[t]he remainder of [the expert’s] testimony on the subject of molding focuses on characteristics and qualities of molded parts, rather than structure that necessarily stems from the word ‘molded.’” Interestingly, the PTAB distinguished between “characteristics and qualities of molded parts” from “structure.”
A practice tip that follows from this case is that a structural definition in the specification for claim terms like “molded” may be useful in arguing that the claim term is structural, as opposed to product-by-process. Similar reasoning applies to terms like “integral,” “unitary,” etc. This case is also reminder that consistent use of terms (e.g., “molded” vs. “integrally molded”) in both the specification and the claims can be vital to a proposed claim construction.