BorgWarner loses appeal of re-exam decision

BorgWarner represented by Fish & Richardson lost an appeal at PTAB concerning the
re-examination of US Patent 6,663,347:


This is a decision on appeal by BorgWarner, Inc.2 (hereinafter “Patent
Owner”) from the Patent Examiner’s decision to reject pending claims 1-7 in
an inter partes reexamination of U.S. Patent 6,663,347 B2 (hereinafter “the
’347 Patent”).3 The Board’s jurisdiction for this appeal is under 35 U.S.C.
§§ 6(b), 134(b), and 315(a).
We AFFIRM.



In this re-exam matter, there was separate district court litigation:


Moreover, we need not defer to the District Court’s interpretation, as
the District Court uses a different standard in interpreting claims. See In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1369 (“[I]t is error for the Board to
‘appl[y] the mode of claim interpretation that is used by courts in litigation,
when interpreting the claims of issued patents in connection with
determination of infringement and validity.”’). We do not consider the
District Court’s interpretation of “a curvature” as “not a series of curvatures”
to be the broadest reasonable interpretation read in light of the specification
as it would be interpreted by one of ordinary skill in the art. A general rule
of claim interpretation is that the term “a” means “one or more.” Baldwin
Graphic Systems, Inc. v. Siebert, 512 F.3d 1338, 1341 (Fed. Cir. 2008)
(“That ‘a’ or ‘an’ can mean ‘one or more’ is best described as a rule, rather
than merely as a presumption or even a convention. The exceptions to this
rule are extremely limited: a patentee must ‘evince[ ] a clear intent’ to limit
‘a’ or ‘an’ to ‘one.’”) (quoting KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d
1351, 1356 (Fed.Cir.2000)). The ’347 Patent expresses no clear intent to
limit the curvature to a simple curve or a compound curve. Mere exemplary
embodiments of a straight curve or a compound curve cannot be reasonably
attributed to an intent to disclaim all other curved paths that provide for easy
removal of a die insert.


The meaning of "substantially" arose


The word “substantially” has been construed many times by our
reviewing court. It can be a term of approximation or a term of magnitude
with meaning varying from “significantly” or “considerably” to “largely” or
“essentially.” See Deering Precision Instruments L.L.C. v. Vector
Distribution Sys. Inc., 347 F.3d 1314, 1321 (Fed. Cir. 2003). While the
modifier “substantially” certainly does broaden the term “straight” to some
degree, it “cannot be allowed to negate the meaning of the word it modifies.”
See In re Hauserman, Inc., 892 F.2d 1049, 15 USPQ2d 1157, 1158 (Fed.
Cir. 1989) (unpublished)(quoting Arvin Industries, Inc. v. Berns Air King
Corp., 525 F.2d 182, 185 (7th Cir. 1975) and citing Borg-Warner Corp. v.
Paragon Gear Works, Inc., 355 F.2d 400, 404 (1st Cir. 1965)).