Tf3 Limited v. Tre Milano, LLC

United States Court of Appeals
for the Federal Circuit
______________________
TF3 LIMITED,
Appellant
v.
TRE MILANO, LLC,
Appellee
______________________
2016-2285
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
00649.
______________________
Decided: July 13, 2018
______________________
BRADFORD J. BADKE, Sidley Austin LLP, New York,
NY, argued for appellant. Also represented by CHING-LEE
FUKUDA; THOMAS ANTHONY BROUGHAN, III, ANNA
MAYERGOYZ WEINBERG, Washington, DC.
JEFFREY GLENN SHELDON, Cislo & Thomas LLP, Los
Angeles, CA, argued for appellee. Also represented by
LAURA LLOYD; DOUGLAS HUNT MORSEBURG, Leech Tish-
man Fuscaldo & Lampl, LLC, Pasadena, CA; THOMAS J.
PEISTRUP, Tre Milano, LLC, Culver City, CA.
______________________
2 TF3 LIMITED v. TRE MILANO, LLC
Before NEWMAN, LOURIE, and HUGHES, Circuit Judges.
NEWMAN, Circuit Judge.
TF3 Limited (“TF3”) appeals the decision of the Pa-
tent Trial and Appeal Board (“PTAB” or “Board”) 1 in an
inter partes review of U.S. Patent No. 8,651,118 (“the ’118
Patent”), requested by Tre Milano, LLC. Tre Milano
challenged the validity of claims 1–5 and 11, and did not
challenge the validity of claims 6–10 and 12–15 of the ’118
Patent. The PTAB instituted review of all of the claims
that were challenged.
We conclude that the Board erred in its finding of an-
ticipation, for the Board erroneously construed two claim
terms: “the length of hair can pass through the secondary
opening” and “free end,” broadening the claims beyond the
description in the ’118 Patent specification. On the cor-
rect claim construction, the claims are not anticipated.
I
BACKGROUND
A. The ’118 Patent
The ’118 Patent is for a “hair styling device” that au-
tomates the curling of hair. In operation, a strand of hair
is fed into a chamber of the device, the hair is wound
around a rotating curling member in the chamber, the
wound hair is heated to preserve the curl, and the curled
hair slides off the curling member and exits the chamber.
TF3 explains that “because the secondary opening 50 is
annular and surrounds elongate member 20 the length of
hair is not required to pass any obstruction or otherwise
be forced to uncurl during its removal from the hair
1 Tre Milano, LLC v. TF3 Ltd., IPR2015-00649, Pa-
per No. 37 (P.T.A.B. May 2, 2016) (“Board Op.”); 2015 WL
3901718 (P.T.A.B. June 22, 2015) (“Institution Dec.”).
TF3 LIMITED v. TRE MILANO, LLC 3
styling device 10, so that the curvature of the curls creat-
ed by the device can be substantially maintained.” ’118
Patent, col. 6, ll. 39–44.
Figures 1 and 2 show the claim elements related to
this appeal: the elongate member 20, primary opening 24,
secondary opening 50, and movable abutment 52:
In operation the device receives a section of hair 26
through primary opening 24 into chamber 16. A motor-
driven rotatable element 34 rotates and its leading edge
38 engages and captures the hair 26. The rotating ele-
ment winds the hair around elongate member 20 until it
reaches abutment 52. The abutment prevents twisting of
the hair by stopping the hair from rotating around the
4 TF3 LIMITED v. TRE MILANO, LLC
free end of the elongate member 20. The wound hair is
then heated. The user then releases the grip on handle
parts 60 and 62, see Fig. 2, automatically moving abut-
ment 52 from its closed position to its open position, and
releasing the curled hair through the second opening 50.
Claim 1 is deemed representative:
1. A hair styling device having:
a body defining a chamber adapted to accommo-
date a length of hair, the chamber having a pri-
mary opening through which the length of hair
may pass into the chamber;
a rotatable element adapted to engage the length
of hair adjacent to the primary opening;
an elongate member around which, in use, the
length of hair is wound by the rotatable element,
the elongate member having a free end;
the chamber having a secondary opening through
which the length of hair may pass out of the
chamber, the secondary opening being located ad-
jacent to the free end; and
a movable abutment which can engage the length
of hair in use, the movable abutment having an
open position in which the length of hair can pass
through the secondary opening, and a closed posi-
tion in which the length of hair is retained within
the chamber, wherein the moveable abutment is
located within one of (i) the secondary opening,
(ii) the primary opening, and (iii) a passageway
connecting the secondary opening to the primary
opening.
Dependent claims 2–5 and 11 add limitations specifying
the position of the movable abutment and the shape of the
secondary opening.
TF3 LIMITED v. TRE MILANO, LLC 5
B. The Prior Art
The Board instituted review on two grounds: anticipa-
tion by U.S. Patent No. 4,148,330 (“Gnaga”) and/or antici-
pation by Japanese Patent Application No. 61-10102
(“Hoshino”).
The Gnaga reference, titled “Motor-Curler Unit for
Automatic Application of Curlers to the Hair to be Treat-
ed,” shows a hair-curling device in which curler A, com-
posed of internal portion B and external portion C, is
inserted into the device at housing D. The hair is wound
around the rotating curler and heated, and the curler
carrying the hair is ejected and disassembled, allowing
removal of the hair by unwinding from the curler. Fig-
ures 6 and 7 depict the Gnaga device:
Gnaga, Figs. 6, 7.
The Hoshino reference describes a hair-curling device
in which a curler is inserted into a winding structure, hair
is wound around the rotating curler, supported by a lock
lever and hair guide arm, and then the curler carrying the
6 TF3 LIMITED v. TRE MILANO, LLC
hair is ejected from the device and disassembled, allowing
removal of the curl by unwinding from the curler.
J.A. 631 (Hoshino Translation). Hoshino Figures 1 and 2
illustrate the device, including curling member 9, lock
lever 25, and hair guide arm 16.
Hoshino, Figs. 1, 2.
C. The Board Decision
The Board held that Gnaga and Hoshino each shows
the same device as claimed in the ’118 Patent, rendering
the claims invalid for anticipation. However, as is appar-
ent, the devices are not the same. Anticipation was
decided on a flawed analysis, whereby the ’118 Patent
TF3 LIMITED v. TRE MILANO, LLC 7
claims were construed to have a breadth beyond the scope
supported by the device described in the ’118 Patent, the
Board then holding that the unduly broad ’118 Patent
claims read on the different Gnaga and Hoshino devices
and thus are anticipated.
The Board construed “free end” to mean “an end of the
elongate member that is unsupported when the movable
abutment is in the open position.” Board Op. at *13. The
Board rejected TF3’s proposed construction of “the length
of hair can pass through the secondary opening” to mean
“when the abutment is in its open position, the styled
length of hair is allowed to slide along the elongate mem-
ber towards and subsequently off its free end,” id., instead
determining that claim 1 “does not require that the length
of hair is allowed to slide along the elongate member
towards and subsequently off its free end.” Id. at *16.
Based on these constructions, the Board rejected
TF3’s argument that “Gnaga lacks (1) an elongate mem-
ber having a free end, (2) a secondary opening adjacent to
the free end, and (3) a movable abutment having an open
position in which the length of hair can pass through the
secondary opening, all present at the same time in a hair
styling device,” finding the argument “not persuasive”
because the argument relied upon TF3’s proposed claim
construction. Id. at *23–24.
The Board also found that Hoshino anticipates the
’118 Patent device, stating, “[W]e agree with Petitioner
that Hoshino teaches every element of claim 1. . . . Patent
Owner’s argument that in Hoshino’s device, hair does not
slide along and off the elongate member is not persuasive
because we do not agree that allowing hair to slide along
the elongate member and subsequently off its free end is a
requirement of claim 1.” Id. at *30.
TF3 appeals, stating that on the correct claim con-
struction and the correct law of anticipation, the claims
are not anticipated.
8 TF3 LIMITED v. TRE MILANO, LLC
DISCUSSION
“Anticipation” in patent usage means that the claimed
device is not new; that it previously existed. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[T]he refer-
ence must describe the applicant’s claimed invention
sufficiently to have placed a person of ordinary skill in the
field of the invention in possession of it.”); In re Donohue,
766 F.2d 531, 533 (Fed. Cir. 1985) (“It is well settled that
prior art under 35 U.S.C. § 102(b) must sufficiently de-
scribe the claimed invention to have placed the public in
possession of it.”). Neither Gnaga nor Hoshino describes
the same device as claimed in the ’118 Patent.
The Board’s error apparently arose from its “construc-
tion” of the claims more broadly than the description in
the ’118 Patent specification, thereby enlarging the claims
beyond their correct scope. However, when the claims are
construed as the subject matter is described in the specifi-
cation, they are not anticipated by the Gnaga and
Hoshino devices.
“The length of hair can pass through the secondary
opening”
The Board declined to construe “the length of hair can
pass through the secondary opening,” as set forth in the
specification, instead ruling that in accordance with the
broadest reasonable interpretation, “claim 1 does not
require that the length of hair is allowed to slide along the
elongate member towards and subsequently off its free
end.” Board Op. at *13–16.
TF3 states that the correct construction requires the
wound hair to slide along the elongate member and pass
out of the chamber in its curled shape. TF3 states that
this is the description in the specification, and that the
claims are not reasonably construed more broadly, even
under the broadest reasonable interpretation standard.
“Above all, the broadest reasonable interpretation must
TF3 LIMITED v. TRE MILANO, LLC 9
be reasonable in light of the claims and specification.”
PPC Broadband, Inc. v. Corning Optical Commc’ns RF,
LLC, 815 F.3d 747, 755 (Fed. Cir. 2016) (emphasis in
original); see Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1298 (Fed. Cir. 2015), overruled on other grounds by
Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)
(en banc) (“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 citation omitted)).
We conclude that the Board erred in its claim con-
struction. The specification describes how the curled hair
is removed from the device:
It is arranged that the abutment 52 in its open
position allows the styled length of hair to pass
out of the secondary opening 50, i.e., to slide along
the elongate member 20 towards and subsequent-
ly off its free end. Little force is required to sepa-
rate the hair styling device 10 from the length of
hair which has been styled . . . the length of hair
is not required to pass any obstruction or other-
wise be forced to uncurl during its removal from
the hair styling device 10 . . . .
’118 Patent, col. 6, ll. 33–42. However, the Board held
that the description “can pass through a secondary open-
ing” is not limited to requiring a secondary opening. The
Board found it “irrelevant” as to whether claim 1 “re-
quires that hair slides along and off the elongate member
in passing through the secondary opening.” Board Op. at
*14. Instead, the Board found that, “We do not under-
stand the use of ‘i.e.’ . . . to signify that passing out of the
secondary opening always must be accomplished by
sliding along and off the elongate member.” Id. at *15.
The Board erred in this analysis, for the specification uses
the abbreviation “i.e.” for the mode whereby the curl
slides out of the device without stretching or uncurling.
10 TF3 LIMITED v. TRE MILANO, LLC
The usage “i.e.” (“id est” or “that is”), “signals an intent to
define the word to which it refers.” Edwards Lifesciences
LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009); see
SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1202
(Fed. Cir. 2013) (“i.e.” is definitional when it “comports
with the inventors’ other uses . . . in the specification and
with each and every other reference”).
The ’118 Patent describes the device as improving curl
retention by the structure that “permits a formed curl to
be slid off the end of the elongate member without being
uncurled.” ’118 Patent, col. 2, ll. 9–11. Neither the Gnaga
nor the Hoshino device has such a structure. The claims
of the ’118 Patent are not reasonably construed to include
a device and method that are not described. As in Enzo
Biochem Inc. v. Applera Corp., 780 F.3d 1149, 1156–57
(Fed. Cir. 2015), the claim construction was erroneously
broadened to include subject matter contrary to the
description in the specification.
Claims are construed in light of the specification. See
Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1322–23
(Fed. Cir. 2015) (“The terms used in patent claims are not
construed in the abstract, but in the context in which the
term was presented and used by the patentee, as it would
have been understood by a person of ordinary skill in the
field of the invention on reading the patent docu-
ments. . . . Thus, a claim receives the meaning it would
have to persons in the field of the invention, when read
and understood in light of the entire specification and
prosecution history.”); Phillips v. AWH Corp., 415 F.3d
1303, 1315 (Fed. Cir. 2005) (en banc) (“The claims, of
course, do not stand alone. Rather, they are part of a
fully integrated written instrument, consisting principally
of a specification that concludes with the claims. For that
reason, claims must be read in view of the specification, of
which they are a part.” (internal quotation marks and
citations omitted)).
TF3 LIMITED v. TRE MILANO, LLC 11
Tre Milano defends the Board’s finding of anticipa-
tion, arguing that there is not “a clear indication in the
intrinsic record that the patentee intended the claims to
be so limited,” citing Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1327 (Fed. Cir. 2012). However, it is not reasonable
to read the claims more broadly than the description in
the specification, thereby broadening the claims to read
on the prior art over which the patentee asserts improve-
ment.
The elongate member having a “free end”
The Board construed “free end” to mean “an end of the
elongate member that is unsupported when the movable
abutment is in the open position.” Institution Dec. at *6.
Based on this construction, the Board found a reasonable
likelihood that Gnaga or Hoshino or both disclose a “free
end” on the curler, because when the curler in the refer-
ences is not locked in place, it has “a free end.” Id. at *7–
10. This construction was based in part on finding that,
when given their broadest interpretation, the ’118 Patent
claims do not require that the movable abutment operates
as described in the specification. Thus the Board con-
strued the claims as unlimited by the specification.
At the PTAB trial, the undisputed evidence was that
this construction of “free end” was incorrect. The specifi-
cation is clear that the free end is not a structural sup-
port, but an end over which the curl slides. This is the
description in the specification. Tre Milano does not point
to any contradictory description. Nonetheless, the Board
stated in its final decision that “the Figures in the ’118
patent, [show] abutment 52 may provide some structural
support to the free end 20 when abutment 52 is in the
closed position.” Board Op. at *8.
Claims are construed with reference to the specifica-
tion and prosecution history, for these are the resources
by which persons in the field of the invention understand
what has been invented. Here, the specification states
12 TF3 LIMITED v. TRE MILANO, LLC
that the “free end” of the elongate member is located
adjacent to the secondary opening. ’118 Patent, col. 9, ll.
39–41. The elongate member and movable abutment are
described in the specification as separated structures
where the “free end” of the elongate member is located
adjacent to the secondary opening. Id., col. 9, ll. 38–50;
id., col. 7, l. 65–col. 8, l. 12. The movable abutment may
be located in (i) the secondary opening, (ii) the primary
opening, or (iii) a passageway connecting the secondary
opening to the primary opening, id., col. 9, ll. 46–50, and
the alternative positions of the movable abutment cannot
provide support to the free end of the elongate member,
which must be located adjacent to the secondary opening.
The Board’s requirement for the free end to have “struc-
tural support” from the movable abutment is contrary to
the specification.
The ’118 Patent claims, construed in light of the speci-
fication, do not read on the prior art and are not antici-
pated by the prior art. See Bristol-Myers Squibb Co. v.
Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir.
2001) (“that which would literally infringe if later antici-
pates if earlier”).
***
Neither the Gnaga nor the Hoshino reference shows
the same device having the same structure and operating
in the same way as claimed in the ’118 Patent. Gnaga
and Hoshino both show hair styling devices in which the
elongate member—the curler—is ejected from the device
along with the curled segment of hair, after which the
curled hair is separated. TF3 stresses that in the ’118
Patent device there is no removal of a curling element
carrying curled hair, no subsequent disassembly of the
curling element, no unwinding of the curl. Instead, in the
’118 Patent device, the curled hair slides out of the device
in curled form. The correct constructions of “elongate
member having a free end” and “the length of hair can
TF3 LIMITED v. TRE MILANO, LLC 13
pass through the secondary opening” implement these
distinctions from the Gnaga and Hoshino devices.
The Board’s decision of anticipation was based on an
improper enlargement of the claims. See SunRace Roots
Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1306 (Fed. Cir.
2003) (“Whether an invention is fairly claimed more
broadly than the ‘preferred embodiment’ in the specifica-
tion is a question specific to the content of the specifica-
tion, the context in which the embodiment is described,
the prosecution history, and if appropriate the prior art.”
(internal quotation marks and citation omitted)). The
Board’s analytic procedure was incorrect. Claims cannot
be “anticipated” by devices that are not the same. Inva-
lidity for anticipation requires that “[t]he identical inven-
tion must be shown in as complete detail as contained in
the patent claim.” Richardson v. Suzuki Motor Co., 868
F.2d 1226, 1236 (Fed. Cir. 1989); see In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009) (“A rejection for ‘antici-
pation’ means that the invention is not new. Anticipation
requires that all of the claim elements and their limita-
tions are shown in a single prior art reference.”). Not only
must each claim element be shown in a single reference,
but the elements must be “arranged or combined in the
same way as recited in the claims.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008);
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548
(Fed. Cir. 1983) (“Anticipation requires the presence in a
single prior art disclosure of all elements of a claimed
invention arranged as in the claim.”).
The conclusion of invalidity on the ground of anticipa-
tion cannot stand, and is reversed.
REVERSED