A federal appeals court ruling may curb the growing trend of using re-examinations to challenge other parties’ patents.

In In Re Suitco Surface Inc., the U.S. Court of Appeals for the Federal Circuit remanded a U.S. Patent and Trademark Office rejection of some claims in a patent re-examination. The PTO’s interpretation of Suitco’s patent claim for “material for finishing the top surface of the floor” was “unreasonably broad,” wrote Circuit Judge Randall Rader.

Rader noted that case law requiring the PTO to give claims “their broadest reasonable construction” does not give the PTO “an unfettered license to interpret claims to embrace anything remotely related to the claimed invention,” Rader wrote. “Rather, claims should always be read in light of the specification and teachings in the underlying patent.”

Suitco will be a frequently cited case for patent lawyers helping clients fight re-examinations, said Steven Moore, an intellectual property litigation partner in the Stamford, Conn., office of New York’s Kelley Drye & Warren, who was not involved in the case.

“It’s a fight that we all have with the patent office,” Moore said. “If it’s in your specification and you’ve used it in a particular manner, that’s what should rule, not this broadest-interpretation concept.”

Seeking a re-examination of the patent is “almost a knee jerk reaction” for defendants in patent infringement cases, he added.

“With the number of re-exams being allowed by the patent office, if you’re in litigation you almost always have a re-exam,” Moore said.

via Law.com – Federal Circuit Ruling May Rein In Patent Re-Examinations.