Federal Circuit gives knee brace patent a leg up

The US Court of Appeals for the Federal Circuit has vacated the rejection of a patent application relating to an elastic knee brace.

Circuit Judge Kara Stoll delivered judgment at the Federal Circuit on Thursday, February 8, finding that claims relating to the structure of the device were improperly invalidated.

US patent application number 13/241,865, an elastic knee brace, featuring a framework, a hinge, a strut, and arm components, was at the centre of the dispute. The application was submitted by Nordt Development.

In November 2016, the Patent Trial and Appeal Board (PTAB) rejected claims 1 and 14 of the ‘865 application, affirming an examiner’s earlier finding.

The first claim, which is “representative of the two claims at issue” according to the Federal Circuit, relates to the hinge joint support mechanism of the brace. The patent application notes that “injection moulded” is a preferred manufacturing method.

The claim was rejected as anticipated by the US patent number 6,238,360 (Gildersleeve), a knee brace named after its inventor. According to the PTAB, Gildersleeve’s flexible sleeve anticipates “injection moulded” as a method of creating the brace.

On appeal, Nordt argued that “injection moulded” relates to a structural limitation in the brace (the connections between the invention’s components), rather than a part of the manufacturing process itself. Nordt complained that the board erred in construing the claims as that of process, rather than structure.

The Federal Circuit said the matter was “not an easy one” and agreed with the board that Nordt had insufficiently explained what structural limitation is imparted by “injection moulded”.

However, it overruled the PTAB, finding that the “injection moulded” claim relates to the invention’s “integral structure” and “can be gleaned from the plain claim language and the specification itself”.

Stoll said: “We have held that, when considering the patentability of product claims that contain process limitations, claim scope is generally based on the product itself, not the process.

The Federal Circuit referred the matter back to the board, for reassessment of the application in a manner “consistent with this opinion” and taking into consideration whether “the surrounding claim language requires any additional structure”.

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