  United States Court of Appeals
      for the Federal Circuit
             __________________________

      FLO HEALTHCARE SOLUTIONS, LLC,
                 Appellant,
                          v.
        DAVID J. KAPPOS, DIRECTOR,
  UNITED STATES PATENT AND TRADEMARK
                  OFFICE,
                  Appellee,
                         AND

               RIOUX VISION, INC.,
                    Appellee.
             __________________________

                      2011-1476
            (Reexamination No. 95/000,251)
             __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
                __________________________

              Decided: October 23, 2012
             __________________________

    GEORGE T. SCHOOFF, Harness, Dickey & Pierce, PLC,
of Troy, Michigan, argued for appellant.
FLO HEALTHCARE   v. KAPPOS                               2


    THOMAS W. KRAUSE, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With him on the brief were RAYMOND
T. CHEN, Solicitor and AMY J. NELSON, Associate Solicitor.
Of counsel was KRISTIN L.R. SAWERT, Associate Solicitor.
               __________________________

Before NEWMAN, PLAGER, and WALLACH, Circuit Judges.
  Opinion for the court filed by Circuit Judge PLAGER.
 Additional views filed by Circuit Judge PLAGER. Addi-
     tional views filed by Circuit Judge NEWMAN.
PLAGER, Circuit Judge.
    Flo Healthcare Solutions, LLC (“Flo”) appeals from a
decision of the Board of Patent Appeals and Interferences
(“Board”)1 of the United States Patent and Trademark
Office (“PTO”) in inter partes Reexamination Control No.
95/000,251.2 The Board upheld the examiner’s rejections
of claims 8-17, 23, 24, 35, 40-42, 73, 76-79, 87, and 88.
After full review of the parties’ arguments we arrive at
the same conclusion, but get there, as we shall explain, by


   1     Pursuant to the America Invents Act (“AIA”)
amendments to Title 35 (see Public Law 112-29), the
Board officially changed its name from the Board of
Patent Appeals and Interferences to the Patent Trial and
Appeal Board on September 16, 2012.
    2    Rioux Vision, Inc. v. Flo Healthcare Solutions,
LLC, No. 2010-010026, 2011 WL 289281 (B.P.A.I. Jan. 27,
2011) (“Board Opinion”), reh’g denied, 2011 WL 1211213
(B.P.A.I. Mar. 30, 2011). While the reexamination was
pending, Flo assigned the patent at issue, United States
Patent No. 6,721,178, to InterMetro Industries Corpora-
tion (“InterMetro”). Flo then merged into InterMetro,
with InterMetro the surviving entity. In this opinion,
however, we adopt the parties’ practice of referring exclu-
sively to Flo.
3                                FLO HEALTHCARE   v. KAPPOS


a different route. Accordingly, we correct the Board’s
analysis, but affirm the Board’s conclusion.
                      BACKGROUND
    The patent under reexamination, United States Pat-
ent No. 6,721,178, describes a mobile computer work-
station intended for medical care environments. Id. at
[54]. Figures 4A, 10A, and 16 of the ’178 patent illustrate
representative embodiments of the claimed invention.




    Flo sued Rioux Vision, Inc. (“Rioux”) in the United
States District Court for the Northern District of Georgia
for infringing the ’178 patent.3 Rioux then initiated an




    3   Flo Healthcare Solutions, LLC v. Rioux Vision,
Inc., Case No. 1:06-CV-2600-TWT (N.D. Ga. filed Oct. 26,
2006). The district court stayed the infringement suit
pending the PTO’s final determination in the reexamina-
tion. The parties later agreed to voluntarily dismiss the
infringement suit with prejudice.
FLO HEALTHCARE   v. KAPPOS                                4


inter partes reexamination of the ’178 patent in the PTO,
which led to this appeal.4
    The PTO granted Rioux’s request for inter partes re-
examination, finding a substantial new question of pat-
entability with respect to all forty-four claims of the ’178
patent. The examiner initially issued thirteen different
obviousness rejections, nine of which relied on United
States Patent No. 5,287,815 to Gross (“Gross”) as a pri-
mary reference. Gross discloses a computer workstation
for supporting and positioning a computer keyboard and
video display terminal at optimal ergonometric positions
with respect to the user. Id. at [57]. Figures 1 and 8 of
Gross are representative.




   4    An inter partes reexamination is a PTO proceed-
ing permitted under Title 35 prior to the AIA amend-
ments (see n.1, supra), by which a third party could
challenge the validity of an issued patent. 35 U.S.C.
§§ 311-318 (added November 29, 1999; amended Septem-
ber 16, 2011). “Unlike an ex parte reexamination pro-
ceeding, an inter partes reexamination proceeding allows
the third-party requester to participate in the reexamina-
tion by submitting written comments addressing issues
raised in the patent owner’s response to an office action,
appealing a decision in favor of patentability, and partici-
pating as a party to an appeal taken by the patent
owner.” Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1332
(Fed. Cir. 2008). Effective September 16, 2012, the AIA
amendments replaced inter partes reexaminations with a
new inter partes review process. 35 U.S.C. §§ 311-319.
5                              FLO HEALTHCARE   v. KAPPOS




     Flo traversed the rejections, added 103 new claims,
and submitted an Information Disclosure Statement
listing twelve non-patent literature references.     The
examiner then issued an Action Closing Prosecution in
FLO HEALTHCARE   v. KAPPOS                                 6


which he found fifty-three of the claims allowable and
determined that sixteen would be allowable if rewritten in
independent form. The examiner withdrew the rejections
that did not rely on Gross as a primary reference, and
issued seven new rejections based on several of the refer-
ences Flo had listed in its Information Disclosure State-
ment.      Three of the new rejections cited an industry
brochure (“Ergotron”) as a primary reference. Ergotron
discloses customizable mobile computer workstations. In
one example, Ergotron illustrates a workstation with an
adjustable work surface to fit the height of the user.




    In response to the Action Closing Prosecution, Flo
amended the objected claims to place them in allowable
format, and argued, inter alia, that the prior art rejections
were improper as applied to those of the pending claims
that recite a “height adjustment mechanism.” Independ-
ent claim 8 is representative of those claims.
    8. A mobile workstation, comprising:
        a moveable chassis;
7                                 FLO HEALTHCARE   v. KAPPOS


        a substantially horizontal tray supported by
    the chassis that defines a work surface;
        a height adjustment mechanism for alter-
    ing the height of the horizontal tray;
        a display screen adjacent to the work surface
    that is tiltable relative to the work surface;
       an input device tray supported adjacent to the
    work surface; and
        a power unit supported by the chassis for sup-
    plying power to the display screen.
’178 patent col. 26, ll. 14-27 (emphasis added).
    Flo argued that the “height adjustment mechanism”
limitation is a means-plus-function limitation that in-
vokes 35 U.S.C. § 112, ¶ 6. Flo further argued that the
function performed by the “height adjustment mecha-
nism” is “altering the height of the horizontal tray,” and
that the corresponding structure disclosed in the written
description for performing that function includes a length-
adjustable vertical beam. Flo further argued that both
Gross and Ergotron use fixed-length vertical structures to
adjust the height of their horizontal work surfaces, and
that none of the cited secondary references cures this
deficiency in Gross and Ergotron. Thus, Flo argued, the
claims reciting a “height adjustment mechanism” were
patentable over the cited prior art.
    The examiner then issued a Right of Appeal Notice in
which he determined that sixty-two of the pending claims
were patentable and that forty-five would be allowable if
rewritten in independent form. However, the examiner
maintained the rejections of the “height adjustment
mechanism” claims. According to the examiner, “the
claims at issue here do not contain the phrase ‘means for,’
and are therefore presumed not to fall under section 112
FLO HEALTHCARE   v. KAPPOS                                 8


paragraph 6. They do recite structure for performing the
function recited in the claim, so the presumption is not
overcome.” Right of Appeal Notice at 25. Flo appealed to
the Board.
     The Board agreed with Flo that “the disputed claim
limitation [height adjustment mechanism] must be inter-
preted in accordance with 35 U.S.C. § 112, ¶ 6” because it
“does not recite sufficient structure for performing the
recited function.” Board Opinion, 2011 WL 289281, at *9.
According to the Board, “the terms ‘height adjustment’
merely qualify the recited ‘mechanism,’ which has not
been shown to inherently impart structure, with a func-
tion or purpose (‘height adjustment’).” Id. The Board
noted, however, that “[t]he description in the ‘178 Pat-
ent . . . does not compel a conclusion that the recitation of
a ‘height adjustment mechanism’ necessarily requires the
presence of a vertical beam.” Id. at *10. Thus, the Board
“f[ou]nd no error in the Examiner’s conclusion that the
limitation, even if subject to 35 U.S.C. § 112, ¶ 6, does not
require a vertical beam as part of the recited ‘height
adjustment mechanism.’” Id. at *9 (emphasis in original).
Based on the examiner’s factual finding that Gross and
Ergotron read on the “height adjustment mechanism”
limitation absent a vertical beam requirement, the Board
affirmed the prior art rejections with respect to all but one
of the disputed claims. Id. at *10-11.
    Flo appealed to this court. We have jurisdiction under
35 U.S.C. § 1295(a)(4)(A).
                        DISCUSSION
                             I.
    According to Flo, the Board properly held that the
“height adjustment mechanism” limitation must be inter-
preted in accordance with 35 U.S.C. § 112, ¶ 6. Appel-
9                                 FLO HEALTHCARE   v. KAPPOS


lant’s Corrected Br. at 10. Flo argues, however, that the
Board committed legal error when it construed the
“height adjustment mechanism” limitation as not includ-
ing a length-adjustable vertical beam, because the written
description “clearly links and associates a length-
adjustable vertical beam with altering or adjusting the
height of the horizontal tray.” Id. at 17 (emphasis in
original).
    We agree with Flo that the Board’s decision was
predicated upon a legally erroneous construction of the
“height adjustment mechanism” limitation. Id. at 4.
However, the error does not lie, as Flo urges, in the
Board’s analysis of the structures disclosed in the written
description for altering the height of the horizontal tray.
Rather, the Board erred in holding that the “height ad-
justment mechanism” limitation invokes 35 U.S.C. § 112,
¶ 6 in the first place.
     Our cases have established two guidelines for deter-
mining whether the special rules of claim construction set
forth in § 112, ¶ 6 apply to a given claim limitation. The
guidelines are straightforward: use of the word “means”
creates a rebuttable presumption that the drafter in-
tended to invoke § 112, ¶ 6, while failure to use the word
“means” creates a rebuttable presumption that the drafter
did not intend the claims to be governed by § 112, ¶ 6.
See Personalized Media Commc’ns LLC v. Int’l Trade
Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). In rebut-
ting the presumption, when a claim recites a function
“but then goes on to elaborate sufficient structure, mate-
rial, or acts within the claim itself to perform entirely the
recited function, the claim is not in means-plus-function
format even if the claim uses the term means.” Id. at 704
(quoting Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420,
1427-28 (Fed. Cir. 1997) (internal quotes omitted)).
Conversely, “a limitation lacking the term ‘means’ may
FLO HEALTHCARE   v. KAPPOS                                10


overcome the presumption against means-plus-function
treatment if it is shown that ‘the claim term fails to recite
sufficiently definite structure or else recites function
without reciting sufficient structure for performing that
function.’” Mass. Inst. of Tech. v. Abacus Software, 462
F.3d 1344, 1353 (Fed. Cir. 2006) (quoting CCS Fitness,
Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir.
2002)).
    Since the term “means” is not present in the claims on
appeal, it is the latter form of rebuttal that is at issue
here. The Board determined that the presumption was
sufficiently rebutted because “the disputed claim limita-
tion [height adjustment mechanism] does not recite
sufficient structure for performing the recited function.”
Board Opinion, 2011 WL 289281, at *9. According to the
Board, “the terms ‘height adjustment’ merely qualify the
recited ‘mechanism,’ which has not been shown to inher-
ently impart structure, with a function or purpose (‘height
adjustment’).” Id. Thus, the Board “conclude[d] that the
disputed claim limitation must be interpreted in accor-
dance with 35 U.S.C. § 112, ¶ 6.” Id.
    We are not convinced that the presumption against a
means-plus-function construction is that easily rebutted.
“Our cases make clear . . . that the presumption flowing
from the absence of the term ‘means’ is a strong one that
is not readily overcome.” Lighting World, Inc. v. Birch-
wood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004).
When the claim drafter has not signaled his intent to
invoke § 112, ¶ 6 by using the term “means,” we are
unwilling to apply that provision without a showing that
the limitation essentially is devoid of anything that can be
construed as structure. See Masco Corp. v. United States,
303 F.3d 1316, 1327 (Fed. Cir. 2002). Thus, we will not
apply § 112, ¶ 6 if the limitation contains a term that “is
used in common parlance or by persons of skill in the
11                                FLO HEALTHCARE   v. KAPPOS


pertinent art to designate structure.” Lighting World, 382
F.3d at 1359.
    It is the case that the generic term “mechanism”
standing alone may connote no more structure than the
term “means.” Mass. Inst. of Tech., 462 F.3d at 1354.
However, we have also recognized that surrounding claim
language further defining the mechanism can add suffi-
cient structure to avoid a § 112 ¶ 6 construction. Id. In
Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580
(Fed. Cir. 1996), for example, we held that § 112, ¶ 6 did
not apply to the claim limitation “detent mechanism”
because dictionary definitions established that “the noun
‘detent’ denotes a type of device with a generally under-
stood meaning in the mechanical arts . . . .” Id. at 1583.
    Dictionary definitions similarly show that the noun
“adjustment,” which modifies “mechanism” here, has a
reasonably well-understood meaning as a name for a
structure. See Random House Unabridged Dictionary 25
(2d ed. 1993) (“3. a device, as a knob or lever, for adjust-
ing: the adjustments on a television set”).5 While this
definition certainly “qualif[ies] the recited ‘mecha-
nism’ . . . with a function or purpose,” Board Opinion,
2011 WL 289281, at *9, a drafter’s decision to define “a
particular mechanism . . . in functional terms is not
sufficient to convert a claim element containing that term
into a ‘means for performing a specified function’ within
the meaning of section 112(6)” because “[m]any devices
take their names from the functions they perform.”
Greenberg, 91 F.3d at 1583. “Height adjustment mecha-
nism” is just such a term.



     5  But cf. Webster’s Ninth New Collegiate Dictionary
57 (1985) (“4. a means (as a mechanism) by which things
are adjusted to one another”).
FLO HEALTHCARE   v. KAPPOS                                12


    No evidence intrinsic to the ’178 patent casts doubt on
this conclusion. The term “height adjustment mecha-
nism” appears in the written description of the ’178
patent twenty-four times, and not once is it used in a
purely functional manner designed to invoke § 112, ¶ 6.
Instead, the written description typically uses the term
“height adjustment mechanism” to designate a class of
structures that are generally understood to persons of
skill in the art. For example, the ’178 patent teaches: “In
addition [to a gas-spring mechanism], other types of
height adjustment mechanisms would also be suitable,
such as a rack and pinion mechanism, a cable and pulley
mechanism, a ratchet mechanism, a ball screw mecha-
nism, a removable pin and holes arrangement, and so
forth.” Id. col. 9, ll. 3-8. Thus, the written description
confirms that the term “height adjustment mechanism”
indicates a structure, and is not “simply a nonce word or a
verbal construct that is [used as] . . . a substitute for the
term ‘means for.’” Lighting World, 382 F.3d at 1360.
    We find that the term “height adjustment mecha-
nism,” as used in the ’178 patent and in common parlance,
reasonably imparts sufficient structure so that the pre-
sumption against applying § 112, ¶ 6 in this context is not
overcome. Accordingly, the Board erred by construing the
“height adjustment mechanism” limitation under § 112,
¶ 6.6 We thus disapprove that portion of the Board’s
decision.7


    6   We arrive at this conclusion under either the def-
erential standard of review stated in In re Morris, 127
F.3d 1048, 1055 (Fed. Cir. 1997), or the non-deferential
review standard stated in In re Baker Hughes, 215 F.3d
1297, 1301 (Fed. Cir. 2000). See accompanying Additional
Views.
    7   In reaching this conclusion, we do not run afoul of
Securities & Exchange Commission v. Chenery Corp., 318
13                                FLO HEALTHCARE   v. KAPPOS


    However, although the Board’s decision was predi-
cated upon a legally erroneous construction of the “height
adjustment mechanism” limitation, we nevertheless agree
with the Board’s ultimate conclusion that the claims do
not require a length-adjustable vertical beam. Board
Opinion, 2011 WL 289281, at *9. The claims themselves
do not recite such a limitation. It is true that all of the
embodiments discussed in the patent have a length-
adjustable vertical beam, but it is not proper to import
from the patent’s written description limitations that are
not found in the claims themselves. Silicon Graphics, Inc.
v. ATI Techs., Inc., 607 F.3d 784, 792 (Fed. Cir. 2010) (“A
construing court’s reliance on the specification must not
go so far as to import limitations into the claims from
examples or embodiments appearing only in a patent’s
written description unless the specification makes clear
that the patentee intends for the claims and the embodi-
ments in the specification to be strictly coextensive.”)
(internal quotation marks omitted).
    We are mindful that this case comes to us on appeal
from the PTO. During reexamination Flo presumably
could have included a length-adjustable vertical beam
limitation in the disputed claims; indeed, Flo did just that


U.S. 80 (1943). This court has long recognized that we
may, “where appropriate, affirm the agency on grounds
other than those relied upon in rendering its decision,
when upholding the agency’s decision does not depend
upon making a determination of fact not previously made
by the agency.” In re Comiskey, 554 F.3d 967, 974 (Fed.
Cir. 2009). We also need not remand for further proceed-
ings before the PTO as we did in In re Aoyama, 656 F.3d
1293 (Fed. Cir. 2011), since Flo would not have had the
opportunity to further amend the claims or submit new
evidence rebutting the presumption against application of
35 U.S.C. § 112, ¶ 6 had the Board upheld the examiner’s
claim construction in the first place.
FLO HEALTHCARE   v. KAPPOS                               14


with several of the claims that are not on appeal. But
with the claims on appeal, Flo for whatever reasons chose
not to make that change. Because Flo decided not to
amend the disputed claims to directly include a length-
adjustable vertical beam when it had the opportunity to
do so, we decline to read such a limitation into the claims
on appeal. We thus affirm the Board’s conclusion that the
claims do not require a length-adjustable vertical beam.
                             II.
    Having corrected the claim construction, we now ap-
ply that construction to the PTO’s prior art rejections.
Anticipation under 35 U.S.C. § 102 is a question of fact, In
re Hyatt, 211 F.3d 1367, 1371-72 (Fed. Cir. 2000), while
obviousness under 35 U.S.C. § 103 is a question of law
based on underlying findings of fact, In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000). We uphold the Board’s
factual determinations unless they are not supported by
substantial evidence, and review the Board’s legal conclu-
sions without deference. Id.
     As earlier set forth, representative claim 8 recites a
mobile workstation comprising: (a) a movable chassis, (b)
a substantially horizontal tray supported by the chassis
that defines a work surface, (c) a height adjustment
mechanism for altering the height of the horizontal tray,
(d) a display screen adjacent to the work surface that is
tiltable relative to the work surface, (e) an input device
tray supported adjacent to the work surface, and (f) a
power unit supported by the chassis for supplying power
to the display screen. The Board found no error in the
examiner’s factual finding that the cited prior art refer-
ences either teach or suggest each of these limitations,
and affirmed the examiner’s prior art rejections with
respect to all but one of the disputed claims. Board
Opinion, 2011 WL 289281, at *10-11.
15                                FLO HEALTHCARE   v. KAPPOS


    Based on our review of the record, we are satisfied
that the factual determinations underlying the Board’s
decision are supported by substantial evidence, and that
the Board came to the correct legal conclusions based on
those facts. Flo does not suggest otherwise. Flo’s only
argument on appeal is that the prior art fails to teach or
suggest a length-adjustable vertical beam. But as we
have discussed, the claims on appeal when properly
construed do not require a length-adjustable vertical
beam. And as Flo acknowledges, the prior art rejections
must stand in the absence of such a limitation. Oral
Argument at 8:10-8:40, available at http://www.cafc.
uscourts.gov/oral-argument-recordings/2011-1476/all. We
thus affirm the Board’s decision that the claims are not
allowable.
                       CONCLUSION
    For the foregoing reasons, we affirm the Board’s rejec-
tion of claims 8-17, 23, 24, 35, 40-42, 73, 76-79, 87, and 88
under 35 U.S.C. §§ 102 and 103.
                       AFFIRMED
  United States Court of Appeals
      for the Federal Circuit
               __________________________

       FLO HEALTHCARE SOLUTIONS, LLC,
                  Appellant,
                            v.
         DAVID J. KAPPOS, DIRECTOR,
   UNITED STATES PATENT AND TRADEMARK
                   OFFICE,
                   Appellee,
                           AND

                 RIOUX VISION, INC.,
                      Appellee.
               __________________________

                        2011-1476
             (Reexamination No. 95/000,251)
               __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
                __________________________

PLAGER, Circuit Judge, additional views.
            The Standard of Review for Board
                  Claim Constructions
    The opinion in this case intentionally elides the ques-
tion of the standard of review applied by this court to
claim construction decisions of the Board (the Patent
Trial and Appeal Board, formerly the Board of Patent
FLO HEALTHCARE   v. KAPPOS                                2


Appeals and Interferences). The reason is that various of
our cases seem to apply one or the other of two (possibly
three—see infra) inconsistent standards, mostly without
acknowledging that the other standard exists. It is diffi-
cult to know which of these standards is the operative
one. In this case, the outcome is the same under what-
ever standard, but that may not always be the case, and it
is not helpful to the bar and the parties in appeals to this
court to leave the issue unclear.
     One standard of review is exemplified by the 1997 de-
cision of this court in In re Morris.1 In Morris, the first
issue decided was whether, in light of two then-recent en
banc decisions by this court, Markman2 and In re
Donaldson,3 the Board was free to continue applying its
“broadest reasonable interpretation” standard to claim
construction issues before it. We held “yes.” Morris
continues to be cited to this day by the PTO as authority
for the Board to apply that standard to claim construction
when an appeal is taken to the Board from an examiner’s
rejection of a claim. See, e.g., the Government’s brief in
this case at p. 14.
     With regard to the further question—the standard of
review applied by this court when in turn we review the
Board’s claim construction—Morris went on to say that
“[t]he question then is whether the PTO’s interpretation
of the disputed claim language is ‘reasonable.’”4 The term
“reasonable” in that context could be seen as a reflection
of the Board’s use of a “broadest reasonable interpreta-
tion” standard, which Morris had just approved.

   1   In re Morris, 127 F.3d 1048 (Fed. Cir. 1997).
   2   Markman v. Westview Instruments, Inc., 52 F.3d
967 (Fed. Cir. 1995) (en banc).
   3   In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994) (en
banc).
   4   Morris, 127 F.3d at 1055.
3                                 FLO HEALTHCARE   v. KAPPOS


     In terms of the later-required Administrative Proce-
dure Act (APA) review standard,5 “reasonable” can be
seen as reflecting the notion of “not arbitrary and capri-
cious,” the APA standard for non-fact issues that are not
“pure” questions of law. However ascribed, at a minimum
it connotes a deferential standard. Morris itself affirmed
the Board’s decision by noting “that the PTO’s interpreta-
tion is reasonable in light of all the evidence before the
Board.”6 This deferential “is the Board’s decision reason-
able” standard for review of Board claim constructions,
pronounced in Morris, has been followed by a number of
Federal Circuit cases since then, including one as recent
as 2010.7
    However, a few years after Morris, an opinion of this
court, In re Baker Hughes,8 announced a different review
standard for this court when evaluating a Board claim
construction. The question in the case was whether the
Board was correct in holding the claims at issue obvious.
The opinion noted the usual rule that we treat without
deference to the lower forum the ultimate question of
whether a claim is obvious. The opinion further acknowl-
edged that the APA applied to Board decisions: “We
review . . . the Board’s findings of fact for substantial
evidence because they are ‘on the record of an agency
hearing provided by statute,’” citing APA § 706.9



    5   See Dickinson v. Zurko, 527 U.S. 150, 152 (1999).
    6   Morris, 127 F.3d at 1055.
    7   See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255,
1259 (Fed, Cir. 2010); In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Crish, 393
F.3d 1253, 1256 (Fed. Cir. 2004).
    8   In re Baker Hughes, 215 F.3d 1297 (Fed. Cir.
2000).
    9   Id. at 1300.
FLO HEALTHCARE   v. KAPPOS                                4


    Later in the opinion, however, the court stated a no-
deference test regarding review of the Board’s claim
construction, comparable to that of district court construc-
tions: “Although the PTO gives claims the broadest
reasonable interpretation consistent with the written
description . . . claim construction by the PTO is a ques-
tion of law that we review de novo, . . . just as we review
claim construction by a district court.”10 As authority for
that proposition Baker Hughes cited the earlier en banc
opinion in In re Donaldson; Morris was not cited.
    As noted above, In re Donaldson was one of the cases
considered in Morris, and found not to be controlling
regarding the standard of review. It is true that the
Donaldson opinion had stated the review rule in non-
deferential “de novo” terms, but had explained that the
standard applied to cases in which “there are no underly-
ing factual issues.”11 In any event, the no-deference
language subsequently picked up in Baker Hughes regard-
ing review of Board claim construction decisions, analo-
gous to district court reviews, has been recited in various
cases, including as recently as this year.12
    The consequence of all this is that we now appear to
have two contradictory lines of authority on the question
of how this court reviews Board claim constructions—a
deferential “reasonable” (arbitrary/capricious-type) re-
view, and a no-deference “pure” law type review. The fact
that the APA now governs our review of PTO decisions

   10   Id. at 1301.
   11   Donaldson, 16 F.3d at 1192.
    12  See, e.g., In re Montgomery, 677 F.3d 1375 (Fed.
Cir. 2012); In re Aoyama, 656 F.3d 1293, 1296 (Fed. Cir.
2011); In re NTP, Inc., 654 F.3d 1268, 1273 (Fed. Cir.
2011); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004); In re Bigio, 381 F.3d 1320, 1324
(Fed. Cir. 2004).
5                                 FLO HEALTHCARE   v. KAPPOS


does not provide guidance on which is the right standard.
This is because the APA itself provides one standard for
“pure” questions of law—which are reviewed without
deference—and different, more deferential, standards for
questions of fact and for mixed questions of fact and law.13
    The question then becomes whether claim construc-
tion by the Board is to be considered a question of “pure”
law—the way this court treats claim construction in
district court litigation under Cybor Corp.14—and thus to
be reviewed without deference; or whether it is something
else, a blend of law and fact and judgment—as the Su-
preme Court said in Markman,15 a “mongrel practice”—in
which case it is at least arguably subject to the “arbitrary
and capricious” standard of APA § 706. Interestingly,
none of the cases applying the Baker Hughes no-deference
standard has paused to explain why that is the preferable
standard as a matter of law or policy, or how it relates to
the review standard that the Board uses.
    Morris, as one of the first of the cases to pronounce on
this issue with its “reasonableness” standard, is presump-
tively the controlling precedent until overturned by the
court en banc or by the Supreme Court.16 However,
Morris was handed down before this court decided that
claim construction in district courts would be reviewed
without deference, so it did not have the benefit of the
arguments in favor of a “pure” question of law approach,
nor did it have cause to recognize the potential problem of
having two inconsistent review standards. That latter

    13 5 U.S.C. § 706.
    14 Cybor Corp. v. FAS Techs, Inc., 138 F.3d 1448
(Fed. Cir. 1998); see also Markman v. Westview Instr.,
517 U.S. 370 (1996).
    15 Markman, 517 U.S. at 378.
    16 South Corp. v. U.S., 690 F.2d 1368 (Fed. Cir.
1982).
FLO HEALTHCARE   v. KAPPOS                                6


problem is rendered more acute by the Board’s use of the
“broadest reasonable interpretation” in reexaminations,
raising the potential of parallel appeals over a Board
decision and a district court decision applying different
standards of review to the same claim construction ques-
tion.17
    The ostensible purpose behind the PTO’s use of the
“broadest reasonable interpretation” of an applicant’s
proposed claim is to allow the examiner and the applicant
to explore the possible scope of the claim, particularly as
it implicates prior art, and to provide opportunity during
the review process for clarification and refinement of the
claim language. In that sense it is an administrative tool
used by the PTO upon initial consideration of claims,
aimed at “fashion[ing] claims that are precise, clear,
correct, and unambiguous,”18 a goal much to be desired.
Later, when a claim construction issue arises, for example
in an infringement suit, the search is for the one “correct”
interpretation that reflects those qualities. Thus when a
district court addresses claim construction, the obligation
in the first instance is on the district court trying the
matter, and ultimately on the appellate court, to make
that determination.
    One of the principal purposes behind the creation of
this court was to provide national uniformity in patent
matters. It can be argued that a uniform standard for
review of claim construction matters, regardless of the
forum whose decision is being appealed, would be consis-
tent with that purpose. That would suggest applying a
single “question of law” standard—determining the single
“correct” interpretation—in reviewing Board claim con-

   17   Cf. In re Baxter Intern. Inc., 678 F.3d 1357, 1366
(Fed. Cir. 2012) (Newman, J., dissenting).
    18  In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
7                                FLO HEALTHCARE   v. KAPPOS


structions just as in reviewing district court claim con-
structions.
    However, that creates at least the appearance of an
incompatible situation in the review process, since this
court presumptively would be applying a more narrow
interpretation to the claims than the Board did. To the
extent the Board upholds an examiner’s “broadest rea-
sonable interpretation” of a claim, even though the Board
might itself have thought a different construction was the
single “correct” one, there is a potential for the Board to
find itself overruled on appeal even though it might have
arrived at the same interpretation as the appellate court
under a more narrow standard.19 Given that this court’s
role in these cases is to review an agency decision on the
record before the agency, the question must be asked
whether a no-deference standard is consistent with that
role, and with the deference that Zurko commands this
court give to the PTO.
    This incompatibility concern assumes that there is a
substantive difference, rather than just a verbal one,
between the “broadest reasonable interpretation” and
what would be the single “correct” interpretation. Said
another way, it assumes that, conceptually at least, the
Board’s application of the “broadest reasonable interpre-
tation” of the contested claim language can include within
it the single “correct” interpretation, but may include
other reasonable interpretations as well.
    A recent case in this court suggests a third possible
standard for review of Board claim constructions that

    19  Whether the Board in reviewing examiner rejec-
tions could or should apply a more narrow standard of
review is a policy question for the PTO; Morris approved
but did not mandate the Board’s use of the “broadest
reasonable interpretation” standard.
FLO HEALTHCARE   v. KAPPOS                                 8


bridges this concern, a standard to my knowledge not
previously articulated. In Abbott Diabetes Care, Inc.,20
the court began its discussion of the case saying, “[c]laim
construction is a legal question, reviewed de novo. . . . In
contrast to district court proceedings involving an issued
patent, claims under examination before the PTO are
given their broadest reasonable interpretation consistent
with the specification.”21 Though that leaves open exactly
what standard the court itself was intending to apply, the
court later said, “[w]e conclude, therefore, that under the
broadest reasonable construction, [the term at issue] is
properly interpreted to mean [what the court understood
it to mean]. Accordingly we vacate the Board’s deci-
sions . . . and remand for the Board to apply the correct
claim construction.”22
    On its face, this appears to be a blend of the other two
standards—non-deferential review by the court, but with
the court applying the broadest reasonable interpretation
of the claim consistent with the administrative practice,
rather than a single “correct” interpretation. In effect, the
decision of the Board would become irrelevant since the
court reapplies “de novo” the Board standard to the facts
of the case. (Later in its conclusion, however, the opinion
notes that the Board’s construction of a particular term in
dispute was “unreasonable and inconsistent with the
specification,” which sounds more like Morris’s “reason-
ableness” test.23)
    This blended approach, if that is what the court ap-
plied, has the benefit of avoiding the incompatibility
problem noted earlier between the Board’s broad review

    20 In re Abbott Diabetes Care Inc., Nos. 2011-1516,
1517, 2012 WL 4465236 (Fed. Cir. September 28, 2012).
   21  Id. at *4 (citations omitted).
   22  Id. at *6 (footnote omitted).
   23  Id. at *7.
9                                  FLO HEALTHCARE   v. KAPPOS


standard and a single correct review standard (assuming
those are operationally different), but it retains the possi-
bility of competing outcomes between decisions reviewing
the Board and those reviewing a district court construc-
tion of the same claim language. Under what circum-
stances this third standard will produce results that differ
from those that might be reached under either the Morris
or Baker Hughes standards is an existential question
about which I offer no view.
    Whichever way this court’s review rule should be cast,
and for whatever reasons, it is perhaps time that the
court definitively decide en banc on an agreed review
standard, one that provides clear direction to the PTO
and the inventor community. Although the review stan-
dard may not always dictate the result, as a matter of
basic court law there should be one standard uniformly
applied by the court to Board claim constructions, rather
than what may appear to be panel-dependent articula-
tions.24
    Rules of law provide the predictions for future deci-
sions, on which citizens can rely in the conduct of their
activities. As a court of appeals, it is this court’s function
to decide the cases before it, but also to rationalize and
clarify the applicable rules of law. When, as here, there
exists an unnecessary lack of clarity in our rules, I believe
we have an obligation as a court to address the problem
and, if possible, correct it.




    24  Mea culpa—my recognition of this problem stems
in part from my trying for purposes of this case to deter-
mine what is the proper statement of the standard, and
from having authored Morris and also having been on the
panel in Baker Hughes.
  United States Court of Appeals
      for the Federal Circuit
               __________________________

       FLO HEALTHCARE SOLUTIONS, LLC,
                  Appellant,
                             v.
         DAVID J. KAPPOS, DIRECTOR,
   UNITED STATES PATENT AND TRADEMARK
                   OFFICE,
                   Appellee,
                           AND

                 RIOUX VISION, INC.,
                      Appellee.
               __________________________

                        2011-1476
             (Reexamination No. 95/000,251)
               __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
                __________________________

NEWMAN, Circuit Judge, additional views.
    This court is charged with assuring, through judicial
process, that correct patent law is consistently and cor-
rectly applied, in the administrative agencies and in the
courts. Our judicial obligation is not merely of philosophi-
cal concern, but of critical economic consequence.
FLO HEALTHCARE   v. KAPPOS                               2


    The Federal Circuit Court of Appeals was created so
that all patent appeals from the district courts throughout
the nation, together with all appeals from the Patent and
Trademark Office and the International Trade Commis-
sion, will be resolved in a single tribunal, under a single
national law. However, as this case illustrates, this goal
is being undermined by a hodgepodge of procedural
rulings, inferences, and presumptions that ignore the
routine mechanisms of patent examination, that confound
the standards of review, and that misapply the principles
of administrative deference. The loser is the technology
community, whose incentive for innovation and commerce
the patent system serves. As former Commissioner of
Patents and Trademarks Donald Banner testified in
supporting formation of the Federal Circuit:
   Unless the inventor can have reasonable cer-
   tainty, that, once granted, his patent is (1) valid
   and (2) enforceable, then the rights conveyed by a
   patent are illusory, the government has defaulted
   on its responsibilities under the patent contract,
   the patent is worthless, and ultimately, the patent
   system becomes a cruel hoax.
Court of Appeals for the Federal Circuit: Hearings Before
the Subcomm. on Courts, Civil Liberties, and the Admini-
stration of Justice of the Comm. of the Judiciary, 97th
Cong. 177-78 (1981).
   The Federal Circuit resulted from a collaboration of
industry and government that undertook to understand
how the law—all areas of law—serve technological ad-
vance. Much has been written about the Domestic Policy
Review of Industrial Innovation, led by President Carter,1


   1  See, e.g., Pauline Newman, The Federal Circuit—
A Reminiscence, 14 Geo. Mason U. L. Rev. 513, 514 (1992)
3                                 FLO HEALTHCARE   v. KAPPOS


and I here focus only on the aspect that led to stabiliza-
tion of patent law through judicial restructure.
    It was recognized that the inconsistency and unreli-
ability of judicial application of law was more extreme as
to patent law than for any other area of federal law. The
variation among tribunals was notorious, as was the
“notorious difference between the standards applied by
the Patent Office and by the courts,” as stated a decade
earlier in Graham v. John Deere Co., 383 U.S. 1, 18
(1966). The detriment to innovative advance and indus-
trial activity was well recognized. Chief Judge Markey of
the Court of Customs and Patent Appeals testified that:
    The crying need for definitive, uniform, judicial
    interpretation of the national law of patents, on
    which our citizens may rely and plan with some
    certainty, has been recognized for over 60 years.
Hearings, 97th Cong. 7.
    The conclusion that a uniform national patent law,
consistently applied in the Patent Office and the courts,
was critical to the nation’s technological leadership and
industrial strength was implemented by the simple expe-
dient of consolidating all patent appeals in a single court.
The House Report summarized the proposed consolida-
tion:
    Presently, there are three possible forums for pat-
    ent litigation: the Court of Customs and Patent
    Appeals, a federal district court, or the Court of
    Claims. . . . [T]he primary problem in this area is
    uncertainty which results from inconsistent appli-
    cation of the law to the facts of an individual


(discussing Domestic Policy Review of Industrial Innova-
tion, (Final Report, U.S. Dep't of Commerce (1979))).
FLO HEALTHCARE   v. KAPPOS                               4


   case. . . .[T]he merger proposal directly addresses
   the issue.
H.R. Rep. 97-312, at 21 (1981).
    To aid in assuring that patentability is governed by
the same law in the Patent Office as in the courts, the
Federal Courts Improvement Act of 1982 eliminated the
separate appellate paths of the Court of Customs and
Patent Appeals and the regional circuit courts of appeal.
The charge to the Federal Circuit was ambitious: to bring
certainty and predictability to the patent system and thus
to provide enhanced incentive to invention and innova-
tion, by assuring that the same law is applied in all
tribunals. To this end, the court gives objective, de novo
review to rulings of patent law, whatever their source.
E.g., Cybor Corp. v. FAS Technologies, Inc., 138 F.3d
1448, 1455 (Fed. Cir. 1998) (claim interpretation is a
question of law, and receives de novo determination on
appeal).
    However, perhaps in accommodation to the increasing
complexity of technological subject matter, perhaps by
inadvertence, there has arisen the situation illustrated in
this appeal, where the same issue can be finally adjudi-
cated to different appellate outcomes, depending on the
tribunal from which it came. This distortion appears to
be related to misunderstanding of the role of “broadest
reasonable interpretation” in patent examination. Thus I
write to encourage remedial attention, for the resulting
uncertainty is no less pernicious than the intercircuit
conflicts of thirty years past. I agree with Judge Plager’s
analysis of this situation, in his “Additional Views” here-
with, but I am impatient with the absence of resolution of
the conflicts that have arisen.
    The “broadest reasonable interpretation” is an exami-
nation protocol, not a rule of law. In its implementation,
5                                 FLO HEALTHCARE   v. KAPPOS


the examiner starts with a blank slate on which the
applicant has described the subject matter he wishes to
patent. The examiner is charged with searching the
entire world knowledge, and to decide what the applicant
is entitled to claim, as a matter of law. See Manual of
Patent Examining Procedure §706 (“After the application
has been read and the claimed invention understood, a
prior art search for the claimed invention is made.”). In
this demanding process, the examiner views the appli-
cant’s presentation broadly, in order to assure that all
possibly relevant prior art is explored. That is the role of
“broadest reasonable interpretation”: it is an examination
tool whereby the applicant and the examiner work to-
gether to determine and define the “invention” to be
claimed.
    The PTO examination is charged with assuring that
the patent complies with the law, objectively and cor-
rectly. If the applicant disagrees with the outcome and
takes the PTO decision to judicial review, the court again
applies the law, objectively and correctly. It is irrelevant
by what path the examiner and the applicant reached
their final resolution; that resolution is judicially re-
viewed for correctness in law. Similarly when patentabil-
ity is challenged in litigation, the patent grant is
judicially reviewed for correctness in law. Questions of
law receive de novo determination, however the questions
reach the court.
     The “broadest reasonable interpretation” applies to
the initial consideration of patentability, not to the final
decision. This protocol was discussed in Application of
Kebrich, 201 F.2d 951, 954 (CCPA 1953) (“the tribunals
[of the Patent Office] and the reviewing courts in the
initial consideration of patentability will give claims the
broadest interpretation which, within reason, may be
applied.”). The purpose has often been explained:
FLO HEALTHCARE   v. KAPPOS                                 6


    [D]uring patent prosecution when claims can be
    amended, ambiguities should be recognized, scope
    and breadth of language explored, and clarifica-
    tion imposed. The issued claims are the measure
    of the protected right. An essential purpose of
    patent examination is to fashion claims that are
    precise, clear, correct, and unambiguous. Only in
    this way can uncertainties of claim scope be re-
    moved, as much as possible, during the adminis-
    trative process.
In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (internal
citations omitted).
    There are traditional differences in the placement of
the burdens of production and proof, in PTO examination
and in litigation. The burden of proof in litigation takes
cognizance of the patent examination conducted by an
expert agency, but this does not dilute the requirement
that questions of law must be decided objectively and
correctly. This standard methodology is outlined in TI
Group Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C.,
375 F.3d 1126, 1139 (Fed. Cir. 2004): “Our validity analy-
sis is a two-step procedure: ‘The first step involves the
proper interpretation of the claims. The second step
involves determining whether the limitations of the
claims as properly interpreted are met by the prior art,’”
quoting Beachcombers, Int'l, Inc. v. WildeWood Creative
Prods., Inc., 31 F.3d 1154, 1160 (Fed. Cir. 1994). Whether
the PTO used a “broadest reasonable interpretation” in
examining the application is irrelevant.
    Although the internal procedures of administrative
and litigating tribunals are historically different, for
questions of law the decision must be correct. For Federal
Circuit review of patentability the criterion is correctness,
whether initially decided in the district courts, the Patent
7                                  FLO HEALTHCARE   v. KAPPOS


and Trademark Office, the International Trade Commis-
sion, or the Court of Federal Claims. Thus on appeal from
the PTO to the Federal Circuit, the court reviews the
PTO’s decision for correctness, “just as we review claim
construction by a district court.” In re Baker Hughes Inc.,
215 F.3d 1297, 1301 (Fed. Cir. 2000). These procedures
have become beclouded, as in In re Morris, 127 F.3d 1048
(Fed. Cir. 1997), where this court stated the question as
whether the PTO's interpretation of disputed claim lan-
guage was “reasonable.” Id. at 1055. Still, this court
decided whether Morris was entitled to the requested
claim scope as a matter of objective law, on de novo review
of the PTO’s decision.
    The same rules apply on review of reexamination as
on initial examination, as the PTO observed with respect
to the Flo Healthcare claims herein. It remains the rule
that “[o]bviousness under section 103 is a question of law
that this court reviews de novo,” and “claim construction,
when, as here, there are no underlying factual issues, is
also a question of law that we review de novo.” In re
Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir. 1994). The
Donaldson court held that on reexamination “the PTO
erred in its construction [of the claims] and this error
consequently led the PTO to impose an improper obvious-
ness rejection.” Id.
    In the reexamination appeal now before us, the PTO
states in its brief that “During reexamination – as in ex
parte prosecution – claims are given their broadest rea-
sonable interpretation consistent with the specification . .
.” That is correct. However, the PTO then advises: “Thus,
this Court reviews the USPTO’s interpretation of dis-
puted claim language to determine whether it is ‘reason-
able’ in light of the specification.” That is incorrect. It is
incorrect to convert a search and examination expedient
into a requirement of appellate deference. I again remind
FLO HEALTHCARE   v. KAPPOS                                8


us of the problems the Federal Circuit was designed to
remedy:
   [T]here are areas of the law in which the appellate
   courts reach inconsistent decisions on the same
   issue, or in which—although the rule of law may
   be fairly clear—courts apply the law unevenly
   when faced with the facts of individual cases. . . .
   merger of the Court of Claims and the Court of
   Customs and Patent Appeals addresses these
   problems.
S. Rep. 96-304, at 9 (1979). This purpose requires the
establishment of uniform law, and its correct application.
