Tempo Lighting, Inc. v. Tivoli, LLC, 2013–1140.

• Decision Date: 10 February 2014
• Docket Number: No. 2013–1140.,2013–1140.
• Citation: 742 F.3d 973
• Parties: TEMPO LIGHTING, INC., Appellant, v. TIVOLI, LLC, Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

742 F.3d 973

TEMPO LIGHTING, INC., Appellant,

v.TIVOLI, LLC, Appellee.

No. 2013–1140.

United States Court of Appeals,Federal Circuit.

Feb. 10, 2014.

Matthew C. Lapple, Lapple IP Law, P.C. Irvine, CA, for Appellant.

Gordon E. Gray, III, Esq., Gray Law Firm, Long Beach, CA, Craig McLaughlin, Esq., Law Office of Craig McLaughlin, Costa Mesa, CA, for Appeals.

Before RADER, Chief Judge, MOORE, and WALLACH, Circuit Judges.

RADER, Chief Judge.

The United States Patent and Trademark Office's (PTO) Patent Trial and Appeal Board (Board) reversed the examiner's rejection of claims 1–3 and 6–13 of U.S. Patent No. 6,554,446 ('446 patent). Tempo Lighting, Inc. (Tempo) appeals that decision. Because the Board's decision lacks the support of substantial evidence in the record and because the Board erred in concluding that Tempo waived certain arguments, this court vacates the decision in-part and remands.

I.

Tivoli, LLC (Tivoli) owns the '446 patent. The '446 patent relates to a stair-step lighting apparatus that uses a reflective strip of material to alert users to the edge of a step in darkened or low-light environments. '446 patent col. 1 ll. 23–27. Claim 1, for example, recites:

1. A lighting apparatus comprising:

a first extruded portion shaped to mount on the nose of a stair step; and,

a second extruded portion coextruded with said first portion and mounted on top of the first portion so as to be above the nose of the stair step, said second portion comprising a material inert to light and selected to have a reflectance factor greater than or equal to light gray polyvinyl chloride.

'446 patent col. 3 ll. 9–17 (emphasis added).

Tivoli sued Tempo for patent infringement on February 27, 2004. Tempo later requested inter partes reexamination with the PTO. The PTO granted the request, and the examiner issued the first Office Action in March 2005, rejecting all the claims. Shortly afterwards, the district court stayed the litigation pending the outcome of the reexamination. Over eight years later, the district court case remains stayed.

As indicated by the length of the stay, the reexamination progressed slowly. Tivoli responded to the first Office Action on May 17, 2005, and Tempo filed comments the following month. However, the PTO took no further action until November 2007, when it issued an order directing Tempo to revise its proposed obviousness rejections. J.A. 422–26.

Tempo responded in December 2007 with sixty different proposed rejections. On May 20, 2008, the examiner adopted five of the rejections, but declined to enter the remainder. J.A. 493–551. The examiner also construed the “inert to light” limitation present in the disputed claims. Citing a dictionary, the examiner defined the term as “a material that either does not react, e.g. by degrading, when exposed to light or a material that does not react because it has been treated with or includes some additive, which inhibits degradation of the material when exposed to light.” J.A. 500.

The examiner closed prosecution on May 15, 2009, maintaining the rejections and the construction of “inert to light.” In June 2010, the examiner issued a Right of Appeal Notice. Tivoli appealed the examiner's rejections, and the parties fully briefed the Board by October 6, 2010. Tempo's brief included arguments supporting the examiner's rejections, and also included alternative grounds for upholding the examiner's determination using Tivoli's proposed claim construction for “inert to light.” J.A. 905. Specifically, Tempo assertedthat various primary references in the examiner's obviousness rejections anticipated the claims under Tivoli's proposed construction. Id.

The Board issued its decision on February 24, 2012. The Board first addressed the claim construction for “inert to light.” It rejected the examiner's dictionary definition because Tivoli had defined the term during the original prosecution of the application that issued as the '446 patent. During original prosecution, Tivoli initially amended the pending claims to include a “nonphotoluminescent material.” J.A. 1193–1201. The examiner objected to that amendment because the claims “should recite positive limitations to particularly claim and distinctly point out features of the invention.” J.A. 1204. In response, Tivoli amended the claims a second time, stating:

The office action objects to claims 1, 7, 10 and 14 because each claim has the limitation “nonphotoluminescent.” In response, Claims 1, 7 and 10 have been amended to disclose “a material that is inert to light” as a positive limitation indicating that the material for the second portion is nonphotoluminescent and not activated to glow by absorbing ambient light.

J.A. 1216. The examiner allowed these claims, and the application issued as the '446 patent. J.A. 1225. Thus, based on the original prosecution history, the Board held that the proper construction for “inert to light” was “nonphotoluminescent and not activated to glow by absorbing ambient light.” J.A. 6–9.

The Board then determined that the rejections of claims 1–3 and 6–13 were improper. J.A. 15–17. Although the Board rejected the examiner's construction of “inert to light,” it nevertheless relied on the examiner's finding that each of the primary prior art references lacks the “inert to light” limitation. J.A. 16. Finally, the Board concluded that Tempo waived its alternative arguments that certain references anticipate the claims because Tempo did not file a cross-appeal raising those arguments. J.A. 16 n.4.

On March, 26, 2012, Tempo filed a request for rehearing. Tempo argued that the Board erred by relying on the examiner's factual findings which were predicated on a different construction of “inert to light” than was adopted by the Board. J.A. 1078–88. Tempo also reiterated its arguments that the claims are unpatentable under the Board's construction of “inert to light.” Id. The Board denied Tempo's request for rehearing on September 26, 2012. J.A. 22–27. The Board did not respond to Tempo's argument that it improperly relied upon the examiner's factual findings under an incorrect claim construction. Id. The Board instead framed the request as advancing alternative grounds for unpatentability. J.A. 24. The Board again concluded that Tempo waived these alternative arguments by not filing a cross-appeal. J.A. 26.

On appeal, Tempo advances three arguments. Tempo argues that the Board erred in construing “inert to light” differently from the examiner. Even assuming the Board's construction was correct, Tempo also argues that the Board erred by relying on the examiner's factual findings under a different claim construction. Finally, Tempo argues that it did not waive its arguments concerning alternative grounds for affirming the examiner's rejections under Tivoli's proposed construction of “inert to light.” This court has jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

II.

This court reviews the Board's legal conclusions de novo and its factual findings for substantial evidence. In re Gartside, 203 F.3d 1305, 1315–16 (Fed.Cir.2000). Claim construction is a question of law. In re NTP, Inc., 654 F.3d 1268, 1273 (Fed.Cir.2011). Anticipation and prior art teachings present questions of fact. In re NTP, Inc., 654 F.3d 1279, 1297 (Fed.Cir.2011). Obviousness is a question of law based on underlying factual findings. Id. Finally, this court accepts the Board's interpretation of PTO regulations unless that interpretation is “plainly erroneous or inconsistent with the regulation.” In re Lovin, 652 F.3d 1349, 1356 (Fed.Cir.2011).

III.

Regarding the claim construction dispute, the examiner concluded that “inert to light” referred to “a material that does not react, e.g., by degrading, when exposed to light or a material that does not react because it has been treated with or includes some additive, which inhibits degradation of the material when exposed to light.” J.A. 500. The Board found that the examiner erred in construing the claims, and held that the broadest reasonable interpretation of the term “inert to light” is “nonphotoluminescent and not activated to glow by absorbing ambient light.” J.A. 7. This court sustains the Board's claim construction.

The language of the claims in this case does not contextually define “inert to light.” Nor does the specification expressly reference that term. Nonetheless, the intrinsic evidence supports the Board's construction. Specifically, during original examination, Tivoli amended the claims to recite “inert to light.” At that time, Tivoli also supplied a meaning for this limitation:

The office action objects to claims 1, 7, 10 and 14 because each claim has the limitation “nonphotoluminescent.” In response, Claims 1, 7 and 10 have been amended to disclose “a material that is inert to light” as a positive limitation indicating that the material for the second portion is nonphotoluminescent and not activated to glow by absorbing ambient light.

J.A. 1216 (emphasis added). In claim construction, this court gives primacy to the language of the claims, followed by the specification. Additionally, the prosecution history, while not literally within the patent document, serves as intrinsic evidence for purposes of claim construction. This remains true in construing patent claims before the PTO. See In re Morris, 127 F.3d 1048, 1056 (Fed.Cir.1997). Here, the prosecution history shows that Tivoli meant for material that is “inert to light” to be “non-photoluminescent and not activated to glow by absorbing ambient light.” This intrinsic evidence supports the Board's decision.

In contrast, the examiner's proposed construction adds multiple limitations that lack support in any form of intrinsic evidence. The intrinsic evidence, for example, contains no reference to the material degrading or not degrading in response to a reaction with light. Similarly the intrinsic evidence makes no reference to additives that would inhibit such a reaction. The examiner instead relied on...