IP Law Daily, PATENT—Fed Cir: Anticipation findings for hair curling device patent reversed due to improper claim construction, (Jul 13, 2018)

By Linda Panszczyk, J.D.

The decision of Patent Trial and Appeal Board (PTAB) of anticipation regarding U.S. Patent No. 8,651,118 (the ‘118 patent), a hair styling device that automates the curling of hair, was based on an improper enlargement of the claims. On the correct claim construction of two claim terms, "the length of hair can pass through the secondary opening" and "free end," the claims are not anticipated and the Board’s decision is reversed, according to the U.S. Court of Appeals for the Federal Circuit (TF3 Limited v. TRE Milano, LLC, July 13, 2018, Newman, P.).

TF3 Limited (TF3) appealed the decision of the PTAB in an inter partes review of the ‘118 patent, requested by Tre Milano, LLC. Tre Milano had challenged the validity of claims 1-5 and 11 but did not challenge the validity of claims 6-10 and 12-15 of the ‘118 patent. Claim 1 is deemed representative and describes a hair styling device having a body defining a chamber, a primary opening, a rotatable element, an elongate member around which, in use, the length of hair is wound by the rotatable element, a secondary opening in the chamber, and a movable abutment which can engage the length of hair in use. Dependent claims 2-5 and 11 add limitations specifying the position of the movable abutment and the shape of the secondary opening. The PTAB had instituted review on two grounds, anticipation by U.S. patent 4,148,330 (Gnaga) and/or anticipation by Japanese patent application no. 61-10102 (Hoshino). The PTAB held that Gnaga and Hoshino each show the same device as claimed in the ‘118 patent, rendering the claims invalid for anticipation.

According to the court, the devices are not the same. Anticipation was decided on a flawed analysis, whereby the ‘118 patent claims were construed to have a breadth beyond the scope supported by the device described in the ‘118 patent. The PTAB’s error, said the court, arose from its construction of the claims more broadly than the description in the ‘118 patent specification, thus enlarging the claims beyond their correct scope. However, when the claims are construed as the subject matter is described in the specification, they are not anticipated by the Gnaga and Hoshino devices.

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." Neither the Gnaga nor the Hoshino device has such a structure. The Board’s requirement for the free end to have "structural support" from the movable abutment is contrary to the specification. The ‘118 patent claims, construed in light of the specification, do not read on the prior art and are not anticipated by the prior art. 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 stressed that, in the ‘118 patent device, there is no removal of a curling element carrying curled hair, no subsequent disassembly of the curling element, and no unwinding of the curl. Instead, in the ‘118 patent device, the court pointed out that 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 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 and the Board’s analytic procedure was incorrect. Claims cannot be anticipated by devices that are not the same. Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference. Not only must each claim element be shown in a single reference, the elements must be arranged or combined in the same way as recited in the claims.

The court reversed the Board’s conclusion of invalidity on the ground of anticipation.

The case is No. 2016-2285.

Attorneys: Bradford J. Badke (Sidley Austin LLP) for TF3 Limited. Jeffrey Glenn Sheldon (Cislo & Thomas LLP) for TRE Milano, LLC.

Companies: TF3 Limited; TRE Milano, LLC

Cases: Patent FedCirNews