Tempo Lighting, Inc. v. Tivoli, LLC

The definition of a term claimed in one applicant's original prosecution was treated as intrinsic evidence when construing the claim of the same term in another applicant's application.

Opinion (Rader) Tivoli, LLC (“Tivoli") sued Tempo Lighting, Inc. (“Tempo”) for patent infringement in 2004, Tempo requested and was granted inter partes reexamination with the U.S. Patent and Trademark Office (“PTO”). In May 2008, the examiner construed the term “inert to light” citing its dictionary meaning. The examiner closed Tempo’s prosecution, citing its construction of the term. The Patent Trial and Appeal Board (“Board”) rejected the examiner’s definition because Tivoli defined the term during its original prosecution. Tempo appeals the Board’s decision arguing that it erred in construing “inert to light” differently than the examiner. A court must accept the Board’s interpretation unless it is “plainly erroneous or inconsistent with regulation.” The Board found that the examiner erred in construing the claims because primacy must be given to the language of the claims, followed by specification; prosecution history is considered intrinsic evidence. The examiner’s reliance on the dictionary definition gave overly broad meaning to “inert to light,” and in doing so, relied on extrinsic evidence that was inconsistent with the intrinsic evidence provided in Tivoli’s original prosecution. The Board’s definition of “inert to light” is AFFIRMED. The court REMANDED the issue of whether the board erred in relying on the examiner’s factual findings based on incorrect construction of “inert to light.”