Federal Circuit Summary

Before Moore, Taranto, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: In a product-by-process claim, terms that can be equally understood as structural or process limitations should generally be construed as structural limitations.

The claims at issue refer to “injection molded” components of a knee brace. The Examiner afforded the term “injection molded” no patentable weight after construing the claims as product-by-process claims and the term as a process limitation. As a result, the Examiner rejected the claims as anticipated. The Board affirmed and Nordt appealed to the Federal Circuit.

The Federal Circuit held that the term “injection molded” is structural and should have been afforded patentable weight. Although the application describes “injection molded” as a process of manufacture, there were “clear structural differences” between a knee brace made with fabric components and injection-molded components. Moreover, terms that can equally be understood as structural or process limitations are “commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.” Thus, the Federal Circuit vacated the anticipation rejection and remanded.

This case is: IN RE: NORDT DEVELOPMENT CO., LLC

Written By: Adam Powell and Josepher Li

Edited By: Paul Stewart