PTAB Construes Claim Term Based on Explicit Definition in Specification

In AVX Corporation v. Presidio Components (IPR2016-00636), the PTAB construed the claim term “essentially monolithic” based on the explicit definition provided in the detailed description of the challenged patent, US6,661,639.  The PTAB found that some of the claim terms were not unpatentable based, in part, on this construction.  This case is an example of a benefit of clearly defining claim terms in the detailed description.

Independent claim 1 of the ‘639 patent includes the limitation “essentially monolithic.”  The Petitioner asserted that “essentially monolithic” should be construed broadly enough to include structures that have no boundaries or joints, and based some invalidity positions on this construction.

In contrast, the PTAB held that an “essentially monolithic structure” includes a partial boundary or seam.  The PTAB pointed to column 5, lines 3-19 of the ‘639 patent, which clearly differentiates between “monolithic” and “essentially monolithic”:

To state another way, monolithic is generally understood to refer to an object comprised entirely of one single piece (although polycrystalline or even heterogeneous) without joints or seams as opposed to being built up of preformed units. In the present invention, the only assembly occurs in the green state, and the individual capacitors obtained are sintered, monolithic or essentially monolithic structures. By “essentially” we refer to the presence of the internal metallizations that create a partial boundary or seam within the structure, but because the metallizations do not cover the entire area of the dielectric layer, the ceramic materials sinter together around the edges of the metallizations to essentially form a monolithic structure. Thus, by monolithic , we refer to the absence of a complete or continuous boundary or seam within the specified structure, with no boundary at all being completely monolithic and a partial boundary being essentially monolithic.

It appears that the PTAB relied solely on this definition in the detailed description to construe the term “essentially monolithic,” which is a reminder of a benefit of providing such definitions in the detailed description.