Federal Circuit Affirmed the PTAB’s Ruling that Claim Terms Should Not be Limited to a Disclosed Preferred Embodiment and Clarified that the PTAB May Expand on a District Court’s Claim Construction Where Necessary to Resolve a Dispute

The Court of Appeals for the Federal Circuit (“CAFC”), in VLSI Technology LLC v. Intel Corporation, Appeal Nos. 2021-1826, -1827, -1828 (Fed. Cir. Nov. 15, 2022), affirmed the Patent Trial and Appeal Board’s (“PTAB”) claim construction of the term “force region” of U.S. Patent No. 7,247,552. Although flip chip bonding was disclosed as a method of creating a “force region” in a preferred embodiment of the ’552 Patent, the CAFC reiterated that claims should not be limited to preferred embodiments or specific examples in the specification and affirmed the PTAB’s conclusion that the term “force region” must include other methods of attaching a chip to an electronic component disclosed in the specification. While the PTAB’s construction differed from the construction adopted by the district court, it did not conflict with it, and the CAFC clarified that the PTAB may go beyond or add to the previous construction of a district court where it is necessary to resolve a dispute between parties.