Appeal No. 2006-0697
Reexamination 90/006,402
Discussion
A. The rejection of patent claims 1-7, 10-13, and 16-17
under 35 U.S.C. § 103 over Chan and Tanenbaum
The appellant informs us that the claims on appeal had already been once interpreted by a
U.S. District Court in a patent infringement civil litigation identified as Red River Fiber Optic
Corp., Inc. v. Level 3 Communications, LLC, Cause No. 2:01-cv-208, Eastern District of Texas.
At oral argument on March 20, 2006, in response to the panel’s inquiry, counsel for the
appellant indicated that the parties settled that litigation and the district court never did enter
judgment either on infringement or validity. According to the appellant (Appeal Brief at 2),
“[s]everal limitations in the claims, as construed by the [U.S. District] Court, are not disclosed,
taught or suggested in the art relied upon by the Examiner to support his rejection.” At oral
hearing on March 20, 2006, however, counsel for the appellant acknowledged to the panel that
the Board might not be bound by the district court’s interpretation of the claims, although he
thought the appellant must not urge a different interpretation than that reached by the district
court.
Neither the examiner nor the board is bound by the district court’s claim interpretation.
As the examiner in this case stated (Answer at 26), during examination, even reexamination,
claim terms are given their broadest reasonable interpretation consistent with the specification,
citing In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1994). The same does not
apply to a U.S. District Court in a patent infringement litigation. The rationale for that
distinction is that during proceedings before the U.S. Patent and Trademark Office, a party may
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