Last Week in the Federal Circuit (June 21–25): How Airtight Does an Air Mattress Have to Be?

Maryrose McLaughlin, Morrison & Foerster summer associate, co-authored this post.

The Federal Circuit announced last week that it will resume in-person oral arguments later this summer. The Court’s new protocols generally take effect with the September 2021 sitting, and we noticed that the Court has also scheduled some in-person arguments in July.

That was the big news from the Federal Circuit last week; on the opinion front, the Court had a quieter week, with no precedential decisions. (The Supreme Court made up for that with a major patent decision of its own.) But among the Federal Circuit’s decisions was an interesting opinion about claim construction and prosecution history. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 0

Non-precedential opinions: 4

Rule 36: 3

Longest pending case from argument: Intex Recreation Corp. v. Team Worldwide Corporation, No. 20-1144 (193 days)

Shortest pending case from argument (non-Rule 36): Apple Inc. v. Corephotonics, Ltd., No. 20-1438 (14 days)

Case of the week: Intex Recreation Corp. v. Team Worldwide Corporation, No. 20-1144

Panel: Judges Newman and Reyna (Judge Stoll was on the panel but did not participate in deciding the case)

You should read this case if: You have a matter involving disavowal of claim scope during prosecution.

This week’s case is about a patent for an air mattress. Team Worldwide Corp. owns a patent claiming “an inflatable body” with a recessed electric pump. Intex Recreation Corp. filed a petition for inter partes review, asserting obviousness and anticipation challenges. One piece of prior art Intex invoked was a patent for a hovering pillow. The pillow hovers by taking in air from a fan, then expelling it through holes on the bottom of the pillow.

Whether the hovering pillow rendered the Team Worldwide’s claims unpatentable turned on the claim construction of the term “inflatable body.” Team Worldwide construed an “inflatable body” to mean “a substantially airtight structure that expands when filled with air or other gases.” Although the claim text and patent description were inconclusive, Team Worldwide used the prosecution history to support limiting the claims to a “substantially airtight” body.

During prosecution, the examiner initially found another patent, “Sexton,” rendered some of the applicant’s claims unpatentable. The applicant distinguished its claims from Sexton by arguing Sexton lacked an inflatable body that was substantially airtight. The applicant said, “[F]or the combined structure to be an inflatable body, it must itself meet the criterion of an inflatable body, i.e., the combined structure taken as a whole must be substantially airtight and expand when filled with air or other gas.” Consequently, the examiner agreed the claims were patentable over Sexton.

Based on that prosecution history, the Board agreed with Team Worldwide’s narrower construction limiting “inflatable body” to one that is “substantially airtight.” As a result, the Board found the claims patentable over the hovering-pillow patent.

The Federal Circuit affirmed those determinations. On claim construction, the Court explained that precedent supports limiting a claim when statements during prosecution clearly and unmistakably disavow claim scope. Additionally, in certain contexts, the use of “i.e.,” can limit the claim scope when it defines a claim term. Here, the applicant used “i.e.,” immediately after the term “inflatable body,” to set forth “the criterion of” the term to the examiner during prosecution.

These circumstances, the Federal Circuit concluded, were sufficient to limit the claims to an “inflatable body” that was “substantially airtight.” The Court held the applicant’s statements to the examiner disclaimed a different meaning. And based on that claim construction, the Court agreed with the Board that Team Worldwide’s claims were patentable over the hovering-pillow patent.

The Court went on to vacate other aspects of the Board’s decision on different grounds, leading it to ultimately remand the case for further proceedings.