| Karen Cassidy Selvaggio
Federal Circuit Summary

Before Reyna, Wallach, and Taranto. Appeal from the Patent Trial and Appeal Board

Summary: A party must file a cross-appeal when their argument requires modification of a decision. Under the APA, the final claim construction need not be identical to the proposed claim construction, so long as it is similar enough that the parties had reasonable notice and an opportunity to be heard.

Hamilton Beach Brands, Inc. (“Hamilton”) petitioned for inter partes review of U.S. Patent No. 7,520,662, owned by f'real! Foods, LLC (“f’real”). The PTAB upheld the patent as not obvious. Hamilton appealed.

As a preliminary matter, the Federal Circuit addressed f’real’s arguments on appeal that the IPR was time barred because f’real initially filed a complaint, which it subsequently voluntarily dismissed due to lack of standing, more than one year before the IPR was filed. The Board found that f’real’s lack of standing to file the original complaint meant that the IPR was not time barred. The Federal Circuit found that, because accepting f’real’s argument on appeal would require a modification to the Board’s decision, a cross-appeal was required. F’real did not file a cross-appeal. Accordingly the Federal Circuit declined to address the issue on appeal.

On the merits, Hamilton first argued that the Board violated the APA by changing claim construction theories midstream, without providing the parties an opportunity to respond, by adopting a construction that neither party requested nor anticipated. The Federal Circuit found that Hamilton had received adequate notice of f’real’s claim construction position through briefing and oral argument. Moreover, because the Board’s construction was similar enough to f’real’s proposed construction it did not constitute an APA violation. F’real had proposed a construction requiring “at least one nozzle oriented towards a soiled area of the splash shield,” while the Board construed the term to be “a nozzle pre-positioned such that it points at the splash shield.”

The Federal Circuit also rejected Hamilton’s additional arguments, affirming both the Board’s claim construction and validity findings.

Editor: Paul Stewart