A "construction is unreasonable" under the broadest reasonable interpretation standard where "it comports with neither the plain meaning of the term nor the specification."  In re Imes, 113 U.S.P.Q.2d 1522, 1525 (Fed. Cir. 2015). 

Imes was an appeal from a decision of the Patent Trial and Appeal Board (Board) affirming the rejection of all pending claims as anticipated or obvious in U.S. Patent Application No. 09/874,423 ("the '423 application").  The '423 application is directed to a device for communicating digital camera image and video information over a network.  On appeal, Mr. Imes successfully challenged aspects of the Board's claim construction and interpretation of the prior art.  The Federal Circuit thus reversed the rejections of independent claims 1, 34, and 43, and their dependent claims.  The rejection of claim 1 was addressed separately from the rejection of claims 34 and 43.

Claim 1 recites an electronic device including a memory for storing digital images, a display for displaying the images, an input device for receiving a request for communication, and first and second wireless communication modules.  The dispute focused on whether the prior art disclosed the second wireless communication module.

The examiner found that disclosure of a removable memory card qualified as the second wireless communication module because it communicated through metal contacts, not a wire.  The Board affirmed, stating that "'wireless data communication transfer from a removable media card' discloses a 'wireless communication module.'"  Id. at 1524.

The Federal Circuit noted that nothing in this case implicated "the deference to fact findings contemplated by the recent decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841-42 (2015)."  Imes, 113 U.S.P.Q.2d at 1524 n.1.  Thus, its review of claim construction was de novo.  Notably, its construction of the term "wireless" relied only on intrinsic evidence, i.e., the specification, unlike the claim construction in Teva.

The court rejected the Board's construction of "wireless" as "inconsistent with the broadest reasonable interpretation in view of the specification."  Id.  The court explained that the '423 application "expressly and unambiguously defines wireless: '[w]ireless refers to a communications, monitoring, or control system[] in which electromagnetic or acoustic waves carry a signal through atmospheric space rather than along a wire.'"  Id. (alterations in original) (quoting '423 application p. 46 l. 26 - p. 47 l. 1).  Furthermore, it "consistently uses the term 'wireless' to refer to methods and devices that carry waves through atmospheric space, such as Bluetooth and various cellular protocols."  Id. (citations omitted).  The removable memory card was not a wireless communication module because its metal contacts do not carry a signal through atmospheric space.  Thus, the court reversed the rejection of claim 1 and its dependent claims.   

The court next addressed the rejection of claims 34 and 43, which recite communications devices.  Here, the dispute turned on the limitation of a communications module "operable to wirelessly communicate streaming video to a destination."  Id.  The Board had construed this language as meaning "capable of wirelessly communicating continuous video transmission."  Id. at 1525.  The court agreed with this aspect of claim construction but found no substantial evidence that it was disclosed by the cited art.

The examiner and Board had relied on disclosure of a wireless digital camera system that serially transmitted multiple images to a server, concluding that "[a] continuous process of sending images is the equivalent to streaming video."  Id. (alterations in original) (citation omitted).  The court disagreed, pointing out that both the '423 application and the prior art cited by the U.S. Patent and Trademark Office (USPTO) consistently distinguish image transmission from video transmission.  It noted that the '423 application contains some embodiments which disclose transmitting images but not video, and other embodiments disclosing transmitting video in a streaming manner.  The court concluded that sending a series of e-mails with images attached does not disclose streaming video. Id.  Furthermore, the prior art distinguished between still images and video clips.  Thus, image transmission was not the same as video transmission.  The USPTO's contrary "construction is unreasonable as it comports with neither the plain meaning of the term nor the specification."  Id.  Sending a series of e-mails did not meet the definition of streaming, nor did still images meet the definition of video. 

The court further held that sending a video file as an e-mail attachment was not streaming or continuous transmission.  Id. at 1526.  Here too, the '423 application distinguished sending a video file from streaming video.  Having found no substantial evidence that the prior art disclosed streaming video capabilities, the Federal Circuit reversed the rejections of claims 34 and 43 and their dependents.  Id.

Thus, although the court described this reversal as due to lack of substantial evidence, it effectively rejected the USPTO's claim construction.  The court held that wirelessly communicating streaming video could not encompass transmitting still images or video files by e-mail under the broadest reasonable interpretation. 

The court's reasoning underlying the reversals of both rejections highlights the usefulness of definitions and consistent usage of terms in a patent application.  Even under the broadest reasonable interpretation standard used by the USPTO, the usage of terms in the application contributed to holdings that the USPTO construed the claims too broadly.  Defining "wireless" as requiring through-the-air transmission and using the term consistently with that definition countered the USPTO's position that a literally wireless removable memory card met the limitation.  Similarly, using "streaming" and "video" consistently and distinctly from e-mail attachments and still images countered the USPTO's position that a series of e-mailed still images or an e-mailed video clip met the streaming video limitation.

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