In Matthews International Corporation v. Vandor Corporation, No. 2017-1889 (Fed. Cir. Mar. 27, 2018) (non-precedential), the Federal Circuit affirmed the PTAB’s final written decision to uphold the claims of Vandor’s patent that Matthews challenged in inter partes review. The claims at issue “are directed to ‘a casket arrangement’ made of pliable material, such as cardboard,” in which side and end panels of the casket can be folded to allow the casket to be reconfigured and condensed for ease in shipping and storage. According to the PTAB and the Court, Matthews failed to prove by a preponderance of the evidence that the claims were anticipated by the prior art, even though the claims may be obvious.
Matthews unsuccessfully argued to the PTAB and the Court that the preamble term “casket body” merely recites “an intended use” that lends the claims no patentable weight. The PTAB concluded the term limits the claims because the specification states the casket forms a container for receiving the remains of the deceased. The PTAB therefore construed the preamble term to require “an arrangement capable of receiving or containing the remains of a deceased.” Matthews argued that prior art patents disclosing a collapsible cardboard ice chest and a collapsible cardboard frozen dough package anticipate the challenged claims. The PTAB concluded that Matthews failed to provide evidence or reasoning as to how the prior art containers satisfied the “casket body” limitation. The PTAB decided that Matthews had not proven the claims were anticipated.
On appeal, the court agreed with the PTAB’s conclusion that “casket body” imparts patentable weight. Importantly, the Court explained that “structural terms are sometimes defined—through claim construction—by the functions they are designed to perform,” but that “does not somehow convert those structural terms into ‘an intended use’ stripped of any patentable weight.” Slip Op. at 3. The Court, however, rejected the PTAB’s conclusion that the “deceased” could include animals as well as humans. The plain meaning of the term “deceased,” according to the Court, is a “dead person.” The Court echoed the PTAB’s finding that Matthews, as the party bearing the burden of proof, had failed to present a case for how the prior art ice chest and frozen dough container disclosed an arrangement capable of receiving the remains of such a “deceased.”
While noting that the challenged claims may be obvious over a combination of prior art disclosing cardboard caskets and art describing the same manner of folding cardboard as disclosed in the challenged patent, the PTAB’s decision concerned only anticipation because that was the only basis for unpatentability that Matthews alleged. The Court accordingly affirmed the PTAB’s final written decision.
The decision offers a simple example of the dangers in advocating a broad claim construction, without a fallback unpatentability argument if the PTAB and Court determine the claims should be construed more narrowly.