In Re Man MacHine Interface Technologies LLC , 822 F.3d 1282 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: MAN MACHINE INTERFACE
TECHNOLOGIES LLC,
Appellant
______________________
2015-1562
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/012,469.
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Decided: April 19, 2016
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KELLY W. CUNNINGHAM, Cislo & Thomas LLP, Los
Angeles, CA, argued for appellant. Also represented by
DANIEL M. CISLO.
JEREMIAH HELM, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Michelle K. Lee. Also represented by THOMAS W.
KRAUSE, FARHEENA YASMEEN RASHEED.
______________________
Before LOURIE, O’MALLEY, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
Man Machine Interface Technologies (“Man Machine”)
appeals the decision of the Patent Trial and Appeal Board
(“Board”) affirming the examiner’s rejection of claims 1, 4,
7–10, and 17 of Man Machine’s U.S. Patent No. 6,069,614
2 IN RE: MAN MACHINE INTERFACE TECHS. LLC
(“ ’614 patent”). For the reasons below, we affirm-in-part,
reverse-in-part, vacate-in-part, and remand.
BACKGROUND
Man Machine’s ’614 patent, titled “Man Machine In-
terface via Display Peripheral” is directed to a remote
control device for making selections on television or
computer screens. Claim 1 requires that the body of the
device be “adapted to be held by the human hand.”
Claim 1 also requires a multi-function “thumb switch
being adapted for activation by a human thumb.” The
thumb switch, which controls cursor movement and object
selection on the screen, includes an annular switch (4)
including four switches that surround a center switch (3),
as shown below in Figure 2A.
’614 patent Fig. 2A.
Claim 1, which is representative of the challenged
claims, reads as follows:
1. A remote control device adapted for use by a
human to control and select from a screen, the
screen including a plurality of choices and a cur-
sor, the remote control device comprising:
IN RE: MAN MACHINE INTERFACE TECHS. LLC 3
a body adapted to be held by the human hand,
the body having a top side and a bottom side;
a thumb switch positioned on the top side of
the body, the thumb switch being adapted for acti-
vation by a human thumb, the thumb switch be-
ing adapted to perform multiple functions;
wherein the thumb switch includes a center
switch, an annular switch, and a cover plate, the
annular switch including only four switches and
the cover plate covers the four switches, wherein
the annular switch surrounds the center switch,
the annular switch being adapted to operate inde-
pendently from the center switch;
wherein the annular switch is adapted to ef-
fect movement of the cursor between the plurality
of choices and the center switch is adapted to ef-
fect selection of one of the choices identified by the
cursor;
electronic means adapted to generate a signal
upon activation of one of the switches; and
transmitting means for transmitting the sig-
nal from the electronic means.
’614 patent (reexamination certificate) col. 1 ll. 26–45
(emphases added).
A third party requested ex parte reexamination of the
’614 patent, which the PTO granted. The examiner
rejected the claims as anticipated and obvious, relying
primarily on Japanese Patent No. 58-219634 (“JP ’634”),
which, as depicted in Figures 1 and 2, discloses a desk-
bound mouse. JP ’634 further discloses a “cursor locking
key” surrounded by four “cursor moving keys” operable by
a user’s finger to control cursor movement on a screen.
4 IN RE: MAN MACHINE INTERFACE TECHS. LLC
JP ’634 Figs. 1, 2.
The examiner construed the claim term “adapted to be
held by the human hand” in the ’614 patent broadly to
include various “forms of grasp or grasping by a user’s
hand,” such as the grasping of the mouse disclosed in
JP ’634. Joint Appendix (“J.A.”) 2426. The examiner
similarly interpreted the claim term “thumb switch”
broadly, as “merely requir[ing] that a switch . . . be capa-
ble of being enabled/activated by a thumb but . . . not
preclud[ing] another digit, i.e. index finger.” J.A. 2428.
Based on this broad claim interpretation, the examiner
rejected claim 1 as anticipated under 35 U.S.C. § 102(b)
over JP ’634 and claims 1, 4, 7–10, and 17 as obvious
under 35 U.S.C. § 103 by JP ’634 in combination with one
or more secondary references. 1 Man Machine appealed to
the Board, which affirmed the examiner’s rejections. The
Board held that (1) the claim term “adapted to be held by
the human hand” did not exclude various forms of grasp
by the human hand, including grasping of a desk-bound
mouse; and (2) the claim term “thumb switch” did not
exclude switch activation by another digit or item such as
1 Given the effective filing date of the claims of the
’614 patent, the versions of 35 U.S.C. §§ 102 and 103 that
apply here are those in force preceding the changes made
by the America Invents Act. See Leahy–Smith America
Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 293
(2011).
IN RE: MAN MACHINE INTERFACE TECHS. LLC 5
a pen “so long as the switch of the device is capable of
being enabled by a user’s thumb.” J.A. 10. In so holding,
the Board emphasized that “Appellant has not cited to a
definition of ‘a body adapted to be held by the human
hand’ or ‘thumb switch’ in the Specification that would
preclude the Examiner’s broader reading.” J.A. 11. This
appeal followed, and we have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
A. Claim Construction
“[W]e review the Board’s ultimate claim constructions
de novo and its underlying factual determinations involv-
ing extrinsic evidence for substantial evidence.” Prolitec,
Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358
(Fed. Cir. 2015) (citing Teva Pharm. U.S.A., Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841–42 (2015)). In this case,
“because the intrinsic record fully determines the proper
construction, we review the Board’s claim constructions
de novo.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1297 (Fed. Cir. 2015). In reexamination, claims are
given their broadest reasonable interpretation (“BRI”)
consistent with the specification. In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984). “While the Board must
give the terms their broadest reasonable construction, the
construction cannot be divorced from the specification and
the record evidence.” In re NTP, Inc., 654 F.3d 1279, 1288
(Fed. Cir. 2011).
We have noted that the phrase “adapted to” generally
means “made to,” “designed to,” or “configured to,” though
it can also be used more broadly to mean “capable of” or
“suitable for.” In re Giannelli, 739 F.3d 1375, 1379
(Fed. Cir. 2014) (quoting Aspex Eyewear, Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (refer-
encing dictionaries)). Here, “adapted to,” as used in the
’614 claims and specification, has the narrower meaning,
viz., that the claimed remote control device is made or
designed to be held in the human hand and the thumb
6 IN RE: MAN MACHINE INTERFACE TECHS. LLC
switch is made or designed for activation by a human
thumb.
The ’614 specification describes how the body of the
remote control device is preferably elongated and rounded
to be held in the hand. See ’614 patent col. 2 ll. 29–31,
id. col. 6 ll. 5–7, id. Figs. 1, 2A. It further describes how
the hand “with the help of palm and its fingers grips the
Remote control device body.” Id. col. 7 ll. 34–35. The
specification also discusses that “the index finger switch is
positioned on the opposite side of the thumb switch, to
naturally align with the index finger position when the
remote control device is held in the hand.” Id. col. 2
ll. 35–38.
Moreover, the specification expressly distinguishes
the remote control device from a desk-bound device like
the one disclosed in JP ’634. The Summary of the Inven-
tion touts that “a user would employ a casual and relaxed
attitude as the remote control device is not desk [bound]
and therefore position bound by where it is placed on the
desk.” Id. col. 4 ll. 33–36. Rather, it is “conveniently held
in user’s left or right hand,” where it is “thus free to be
held and moved around.” Id. col. 4 ll. 37–39. Continuing,
the Summary of the Invention states that the benefits of
the invention include “ease of use as the device is not desk
bound, while being used or not used, [and] therefore can
be kept and held in more user convenient positions and
postures.” Id. col. 4 ll. 41–43. The broadest reasonable
interpretation of a claim term cannot be so broad as to
include a configuration expressly disclaimed in the speci-
fication.
Based on the language in the specification, we reject
the Board’s unreasonably broad construction and construe
“adapted to be held by the human hand” to mean “de-
signed or made to be held by the human hand.” The
proper understanding of “adapted to be held by the hu-
man hand” would not include gripping a desk-bound
IN RE: MAN MACHINE INTERFACE TECHS. LLC 7
device such as, for example, the desk-bound mouse dis-
closed in JP ’634.
Similarly, we reject the Board’s overly broad construc-
tion of “thumb switch being adapted for activation by the
human thumb.” Claim 1 expressly requires a thumb
switch, not a finger switch; the Board’s construction
ignores the term “thumb” in “thumb switch.” And the
claim goes on to further require that the thumb switch be
“adapted for activation by a human thumb.” ’614 patent
(reexamination certificate) col. 1 ll. 32–33.
The Board also erred by not interpreting “thumb
switch” in light of the specification. This court’s cases on
BRI make clear that the proper BRI construction is not
just the broadest construction, but rather the broadest
reasonable construction in light of the specification.
Proxyconn, 789 F.3d at 1298 (“A construction that is
unreasonably broad and which does not reasonably reflect
the plain language and disclosure will not pass muster.”
(internal quotation marks and citations omitted)). Here,
the Summary of the Invention states that the thumb
switch is a “slightly bigger than thumb size circle or oval
that is contoured to the contours of a thumb.” ’614 patent
col. 2 ll. 3–5. The specification repeatedly refers to the
multi-function switch as a “thumb switch.” See, e.g.,
id. col. 6 ll. 13–17, 29–65. The specification further states
that the multi-function thumb switch is sized “such that it
enables a human thumb to activate by pushing one or
other of the switch’s functions without physically separat-
ing the thumb from the multi-function switch.” Id. col. 5
l. 67 – col. 6 l. 4. And the specification repeatedly refers
to pressure applied to the thumb switch as “thumb pres-
sure.” See, e.g., id. col. 2 ll. 8–13, 14–26, id. col. 8 ll. 44–
49. Activation of the switch by another finger is simply
not contemplated by the ’614 patent’s written description.
The Board’s broad construction of “thumb switch be-
ing adapted for activation by a human thumb” as being
merely capable of activation by a human thumb is unrea-
8 IN RE: MAN MACHINE INTERFACE TECHS. LLC
sonable in view of the specification’s clear teaching that
the patentee intended a narrower meaning. As we have
explained, “[a]bove all, the broadest reasonable interpre-
tation must be reasonable in light of the claims and
specification.” PPC Broadband, Inc. v. Corning Optical
Commc’ns RF, LLC, No. 2015-1364, 2016 WL 692369, at
*5 (Fed. Cir. Feb. 22, 2016). Thus we reject the Board’s
unreasonable construction, instead construing “thumb
switch being adapted for activation by a human thumb” in
view of the specification to mean “thumb switch being
made or designed for activation by a human thumb.”
B. Anticipation
A patent is invalid for anticipation under 35 U.S.C.
§ 102 if a single prior art reference discloses each and
every limitation of the claimed invention. Schering Corp.
v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003).
JP ’634, teaching a desk-bound device with a switch
activated by a user’s palm or finger, does not disclose the
properly construed claim limitations “adapted to be held
by the human hand” and “thumb switch being adapted for
activation by a human thumb.” Because the Board’s
anticipation rejection was based on erroneous claim
constructions and the rejection is not supported under the
proper constructions, we reverse the Board’s finding that
JP ’634 anticipates claim 1 of Man Machine’s ’614 patent.
C. Obviousness
The examiner also rejected the claims as obvious over
JP ’634 combined with one or more prior art references.
The only combination before us on appeal is U.S. Patent
No. 5,594,509 (“Florin”) in view of JP ’634, so we limit our
review to that combination. As depicted below in Fig-
ure 1, Florin discloses a hand-held remote control device
with a thumb switch that is used to select images on a
screen.
IN RE: MAN MACHINE INTERFACE TECHS. LLC 9
Florin Fig. 1 (in part).
As the examiner properly found, Florin discloses a
remote control body that is held by a human user. Florin
also teaches a center button activated by a human thumb.
While Florin’s thumb switch may not include the claimed
“annular switch including only four switches and the
cover plate cover[ing] the four switches,” JP ’634 discloses
an annular switch made of four switches covered by a
cover plate that controls cursor movement. A1720–21.
The examiner relied on evidence from the request for
reexamination showing a motivation to combine Florin
and JP ’634: “In the same field of endeavor of interactive
cursor controls, . . . the combination of JP ’634 with Florin
is no more than a known base system (Florin) combined
with a known improvement . . . .” J.A. 1721–22. Man
Machine, however, did not introduce or rely on objective
indicia of nonobviousness. See Oral Argument at 3:53–
4:28, available at http://oralarguments.cafc.us
courts.gov/default.aspx?fl=2015–1562.mp3 (conceding
that patentee did not rely on objective considerations of
nonobviousness).
Obviousness is a question of law based on underlying
factual findings that are reviewed for substantial evi-
dence, including what a reference teaches and whether
there would have been sufficient motivation to combine
the prior art. In re Baxter Int’l, Inc., 678 F.3d 1357, 1361
(Fed. Cir. 2012). Even under the proper, narrower con-
10 IN RE: MAN MACHINE INTERFACE TECHS. LLC
struction of “adapted to be held by the human hand” and
“thumb switch adapted for activation by a human thumb,”
substantial evidence supports the Board’s factual findings
underlying its obviousness determination. Based on these
factual findings, we agree that claims 1, 4, 8, and 10
would have been obvious over the combination of Florin
and JP ’634. Therefore, we affirm the obviousness rejec-
tion made in view of Florin and JP ’634. 2
CONCLUSION
For the reasons above, we reverse the Board’s antici-
pation rejection based on improper claim constructions.
Even as properly construed, however, we affirm the
Board’s determination that claims 1, 4, 8, and 10 would
have been obvious over Florin in view of JP ’634. We
vacate and remand the obviousness rejections of claims 7,
9, and 17 for proceedings consistent with this opinion, and
in particular, for determination of whether those claims
would have been obvious under the correct claim con-
structions.
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, REMANDED
COSTS
No costs.
2 We cannot consider the obviousness rejections of
claims 7, 9, and 17 because neither party introduced those
arguments on appeal besides challenging the claim con-
structions on which they are based. Accordingly, we
vacate those rejections and remand for the Board to
consider the obviousness rejections of claims 7, 9, and 17
in view of the correct claim constructions.