Many patent office determinations come down to claim interpretation. While many practitioners may complain about unreasonably broad interpretations by examiners, applicants often have only their own words to blame.
Practitioners strive for breadth in protecting inventions, as they should. The pursuit of breadth can influence not only the terms used in the claims, but it can also permeate through to the terms and language used in the specification. For example, practitioners sometimes define terms so as to maximize expansive coverage and avoid a narrowing interpretation years later during enforcement.
However, failing to recognize that the quest for breadth may sometimes leave traps for the unwary can have consequences that may be far worse than losing a infringement case many years down the road (in that you never get the chance to have the infringement case in the first place). We see an example today from Adidas where broad definitions in the specification set up a trap that the PTAB was all to happy to spring when deciding the case on appeal. Appeal 2023-000347, Application 15/402,694.
The invention relates to relates generally to methods and systems for monitoring physiological and athletic performance characteristics of a subject. Claim 58 on appeal is reproduced below:
58. A fitness monitoring system for monitoring parameters of a subject engaged in a physical activity, comprising:
a monitoring garment configured to cover at least a portion of the subject’s torso;
a first transmission sensor incorporated into the monitoring garment and configured to transmit a first physiological signal related to the subject engaged in the physical activity;
a second transmission sensor incorporated into the monitoring garment and configured to transmit a
second physiological signal related to the subject engaged in the physical activity;
a first receive sensor incorporated into the monitoring garment and configured to receive the first and the second physiological signals;
a second receive sensor incorporated into the monitoring garment and configured to receive the first and second physiological signals;
local electronics incorporated into the monitoring garment proximate to at least one of the first transmission sensor, the second transmission sensor, the first receive sensor, and the second receive sensor, the local electronics comprising:
a processor configured to receive and preprocess the first and second physiological signals; and
a memory configured to store the preprocessed first and second physiological signals, wherein the local electronics are configured to communicate the stored preprocessed first and second physiological signals to a remote monitor.
Adidas’ priority claim went back to 2009. It is easy to see why Adidas was fighting hard for this scope, given the explosion of wearables taking place.
One of the primary issues on appeal was the meaning of the term “garment.” The examiner provided a broad interpretation that included even a textile strip (because that is what the prior art showed). Adidas argued that a strip was not a garment, which on its face may be a reasonable argument.
Specifically, the Examiner cited the claim language (“a monitoring garment configured to cover at least a portion of the subject’s torso”) and determined the plain and ordinary meaning of the term “garment” was “anything that is capable of being worn.” The examiner relied on a dictionary and thus concluded that the prior art’s textile strip (that was shown being worn on the chest in the prior art) met the claim limitation.
Adidas argued that the interpretation was unreasonably broad under BRI. Adidas cited to a portion of the specification that gave an example of the garment as a “shirt or vest” and explained that if “anything that is capable of being worn” is a garment per the Examiner’s construction, then a wristwatch, a shoe, a belt, and a backpack all would be garments, which is not so. Again, without digging further, this seems to be a reasonable argument. While the examiner dismissed it as improperly importing limitations from the specification into the claims, the PTAB took another approach.
Specifically, the problem for Adidas was that while the examiner did not read the whole specification, the PTAB did (internal citations omitted, emphasis in original):
Claim 58 pertinently recites “a monitoring garment configured to cover at least a portion of the
subject’s torso.” Beyond imparting breadth to the claimed “garment” by specifically reciting that it covers at least a portion of the subject’s torso, this claim language does little to elucidate the
outer boundaries of the plain and ordinary meaning of the term “garment.” Turning to Appellant’s Specification, we conclude the most pertinent passage is not discussed by the Examiner or by Appellant. It provides: “According to the invention, the wearable monitoring garment can comprise
various garments, such as a shirt, vest or jacket, belt, cap, patch, and the like.” The
general tone of this description is to impart a breadth to the term “garment,” and the specifically provided examples of a belt and a patch are particularly pertinent to the disclosures of Lanfermann at issue, which are discussed below. For example, Appellant’s contention that the meaning of “garment” cannot include a “belt” (Appeal Br. 9) is flatly contradicted by Appellant’s Specification
It is never good when the PTAB points out that one of your primary arguments on appeal is “flatly contradicted” by your own specification. Adidas argued that a garment cannot include a belt, yet their own specification defined the garment to include a belt. In hindsight, one does not need a law degree (or even any legal experience) to see the fundamental problem with Adidas’ argument. Even lawyers from the top law firms with the top name recognition and graduating from the top law schools can still fall victim to this simple-minded trap. It can happen to any practitioner. Unchecked hubris and an unending push for breadth can lead to the same results achieved by Icarus.
So, whenever there is an interpretation issue, at a minimum the practitioner should read the whole specification. While there are often unpredictable situations where the examiner or PTAB twist the words of the specification to argue for breadth, patent practitioners can avoid being burned by their own definitions with a little humility that looks out for situations where the applicant’s own words spell their doom.