Google LLC v. Ecofactor, Inc.

Case: 22-1750 Document: 41 Page: 1 Filed: 02/07/2024

United States Court of Appeals

for the Federal Circuit

______________________

GOOGLE LLC, ECOBEE, INC.,

Appellants

v.

ECOFACTOR, INC.,

Appellee

______________________

2022-1750, 2022-1767

______________________

Appeals from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in Nos. IPR2020-

01504, IPR2021-00792.

______________________

Decided: February 7, 2024

______________________

MATTHEW A. SMITH, Smith Baluch LLP, Washington,

DC, argued for all appellants. Appellant Google LLC also

represented by ELIZABETH LAUGHTON.

TIMOTHY J. CARROLL, Venable LLP, Chicago, IL, for ap-

pellant ecobee, Inc. Also represented by JUSTIN J. OLIVER,

Washington, DC; LAURA A. WYTSMA, Los Angeles, CA.

JONATHAN LINK, Russ August & Kabat, Washington,

DC, argued for appellee. Also represented by REZA

MIRZAIE, Los Angeles, CA.

______________________

Case: 22-1750 Document: 41 Page: 2 Filed: 02/07/2024

2 GOOGLE LLC v. ECOFACTOR, INC.

Before REYNA, TARANTO, and STARK, Circuit Judges.

REYNA, Circuit Judge.

Appellants Google LLC and ecobee, Inc. (collectively,

“Google”) appeal from a Final Written Decision of the

United States Patent and Trademark Office’s Patent Trial

and Appeal Board, which found the challenged claims of

U.S. Patent No. 8,498,753 not unpatentable. Google chal-

lenges the Board’s determination on the basis that the

Board made an erroneous claim construction of a limitation

in Claim 1. Google also argues that the Board’s Final Writ-

ten Decision violates the Administrative Procedure Act be-

cause Google had no notice or an opportunity to address the

Board’s construction. We reverse the Board’s claim con-

struction, vacate the Board’s Final Written Decision, and

remand.

BACKGROUND

U.S. Patent No. 8,498,753

EcoFactor, Inc. (“EcoFactor”) is the assignee of U.S. Pa-

tent No. 8,498,753 (the “’753 patent”), which is entitled

“System, Method and Apparatus for Just-In-Time Condi-

tioning Using a Thermostat” and which relates generally

to climate control systems, such as heating and cooling sys-

tems (“HVAC” systems). The ’753 patent discloses a ther-

mostat that takes into consideration factors like outside

weather conditions and the “thermal characteristics of in-

dividual homes in order to improve the ability to dynami-

cally achieve the best possible balance between comfort

and energy savings.” ’753 patent, 2:1–6. The claimed ob-

jective of the ’753 patent is to reduce the cycling time of the

climate control system, HVAC, when a user seeks a specific

indoor temperature at a certain time. See, e.g., id. at 9:9–

10.

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GOOGLE LLC v. ECOFACTOR, INC. 3

Claim 1 is representative and recites the following: 1

1. [1a] A method for reducing the cycling time of a

climate control system, said method comprising:

[1b] accessing stored data comprising a plurality of

historic internal temperature readings taken

within a structure and a plurality of measurements

relating to a plurality of historic external tempera-

tures outside said structure during at least one se-

lected time period;

[1c] determining one or more thermal performance

values of said structure

[1d] by correlating at least one of the plurality of

historic internal temperatures with at least one of

the plurality of historic external temperatures that

both occur at a first time during the at least one

selected time period, and by correlating at least one

of the plurality of historic internal temperatures

with at least one of the plurality of historic external

temperatures that both occur at a second time dur-

ing the at least one selected time period,

[1e] wherein said one or more thermal performance

values indicate a rate of change of temperature in

said structure in response to changes in outside

temperatures;

[1f] storing said one or more thermal performance

values of said structure;

[1g] retrieving a target time at which said structure

is desired to reach a target temperature;

1 The limitation numbering [1a]–[1m] follows the

numbering used by the parties both before the Board and

on appeal.

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4 GOOGLE LLC v. ECOFACTOR, INC.

[1h] acquiring at least a first internal temperature

inside said structure at a third time prior to said

target time;

[1i] acquiring at least a first external temperature

relating to a temperature outside said structure at

the third time prior to said target time;

[1j] obtaining at least one forecasted temperature

forecasted to occur outside the structure at the tar-

get time;

[1k] retrieving at least said one or more thermal

performance values of said structure that indicate

said rate of change of temperature in said structure

in response to changes in outside temperatures;

[1l] retrieving at least one performance character-

istic of said climate control system;

[1m] determining a first time prior to said target

time at which said climate control system should

turn on to reach the target temperature by the tar-

get time based at least in part on [i] said one or

more thermal performance values of said structure,

[ii] said performance characteristic of said climate

control system, [iii] said first internal temperature,

[iv] said first external temperature, and [v] the

forecasted temperature;

....

Id. at 9:9–54. Pertinent to this appeal is the [1m] limita-

tion and inputs [i]–[v] recited in that limitation.

Proceeding Before the Board

Google filed a petition to institute an inter partes re-

view (“IPR”) of claims 1–20 of the ’753 patent. J.A. 2.

Google asserted a single ground: that the combination of

U.S. Patent No. 5,197,666 (“Wedekind”) in view of U.S. Pa-

tent No. 6,216,956 (“Ehlers”) renders claims 1–20 obvious.

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GOOGLE LLC v. ECOFACTOR, INC. 5

J.A. 2, 11. The Patent Trial and Appeal Board (“Board”)

later instituted the IPR. J.A. 2.

Following institution, the parties disputed whether

Wedekind disclosed the portion of claim limitation [1m]

that reads “determining a first time prior to said target

time . . . based at least in part on . . . [iii] said first internal

temperature.” J.A. 18–21, 24–27 (emphasis added).

Google argued that Wedekind calculated a “first time prior

to said target time” based on thermal performance values

(input [i]) which are themselves calculated from internal

temperature values (input [iii]). See J.A. 433–35; see also

J.A. 439–40. Thus, according to Google, Wedekind’s “first

time prior to said target” was “based at least in part

on . . . [iii] said first internal temperature.” See J.A. 433–

35; see also J.A. 439–40 (emphasis added). EcoFactor dis-

agreed, contending that each input in the [1m] limitation

was distinct and could not be intertwined as Google argued

or else it would render certain claim limitations meaning-

less. See J.A. 1263, 1265. Neither party explicitly argued

for claim construction to resolve the issue.

On March 3, 2022, the Board issued its Final Written

Decision in two joined IPRs, Nos. IPR2020-01504 and

IPR2021-00792. The Board concluded that Google had not

shown by a preponderance of the evidence that the chal-

lenged claims of the ’753 patent were unpatentable. J.A. 1,

30. In coming to its decision, the Board determined that

claim construction was unnecessary, and then concluded,

based on the claim language, that the inputs [i]–[v] of the

[1m] limitation were separate and distinct components

that required distinctly different input data. See J.A. 25–

26. The Board found that Google’s theory of obviousness

did “not use each of the five distinct inputs,” but rather

double counted an input such that it uses “‘one or more

thermal performance values of said structure’ to satisfy

both inputs [i] and [iii].” J.A. 26. For this reason, the Board

found that Google’s obviousness theory, reliant on

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6 GOOGLE LLC v. ECOFACTOR, INC.

Wedekind, failed to show that the prior art taught the dis-

puted limitation. J.A. 27.

Google timely appealed. We have jurisdiction under

28 U.S.C. § 1295(a)(4)(A).

STANDARD OF REVIEW

We review the issue of claim construction of a patent

claim de novo with any underlying fact findings reviewed

for substantial evidence. Dionex Softron GmbH v. Agilent

Techs., Inc., 56 F.4th 1353, 1358 (Fed. Cir. 2023). We also

review de novo the Board’s compliance with the Adminis-

trative Procedure Act (“APA”). In re NuVasive, Inc., 841

F.3d 966, 970 (Fed. Cir. 2016).

DISCUSSION

Google argues that the Board, despite stating other-

wise, construed the [1m] limitation of Claim 1. According

to Google, the Board’s implicit claim construction is wrong

and requires reversal. EcoFactor contends that the Board

made no claim construction and that its findings are sup-

ported by substantial evidence. We first address whether

the Board construed Claim 1 of the ’753 patent.

I. The Board Construed the [1m] Limitation

A.

It is a bedrock principle of patent law that claims of a

patent define the scope of a patented invention and the pa-

tentee’s right to exclude. See Teva Pharm. USA, Inc. v.

Sandoz, Inc., 574 U.S. 318, 321 (2015); Markman v.

Westview Instruments, Inc., 517 U.S. 370, 372 (1996); Phil-

lips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en

banc). Claims are “the life of the patent,” defining the lim-

its of the patent’s scope. 2 WILLIAM C. ROBINSON, THE LAW

OF PATENTS FOR USEFUL INVENTIONS §505, at 111 (1890).

That scope, the Supreme Court explained, “must be known

for the protection of the patentee, the encouragement of the

inventive genius of others, and the assurance that the

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GOOGLE LLC v. ECOFACTOR, INC. 7

subject of the patent will be dedicated ultimately to the

public.” Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S.

364, 369 (1938); see also Motion Picture Pats. Co. v. Univer-

sal Film Mfg. Co., 243 U.S. 502, 510 (1917).

It is also well understood that “[c]laim construction

serves to define the scope of the patented invention and the

patentee’s right to exclude.” HTC Corp. v. Cellular Comms.

Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir. 2017); see O2

Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d

1351, 1360 (Fed. Cir. 2008). “Claim construction is the ju-

dicial statement of what is and is not covered by the tech-

nical terms and other words of the claims.” Netword, LLC

v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) (in-

ternal quotation marks omitted).

Less clear, at times, is whether a court or other tribu-

nal has construed a claim or whether it has simply com-

pared the claim to prior art or an allegedly infringing

technology. While the line between these two inquiries can

be fine, the answer could be critical given the different

standard of review applicable to each issue on appeal. Di-

onex, 56 F.4th at 1358 (reviewing claim construction deter-

mination based on intrinsic evidence de novo); Fleming v.

Cirrus Design Corp., 28 F.4th 1214, 1221–22 (Fed. Cir.

2022) (reviewing question of whether asserted prior art dis-

closes claim limitation for substantial evidence); Amgen

Inc. v. Hospira, Inc., 944 F.3d 1327, 1335 (Fed. Cir. 2019)

(noting that infringement presents a question of fact re-

viewed for substantial evidence when tried to a jury).

To determine whether a court, or the Board, has con-

strued a claim, it is helpful to look to the outcome of the

tribunal’s analysis. See HTC Corp., 877 F.3d at 1367 (de-

termining that a claim construction occurred where the

Board’s findings established the scope of the patented sub-

ject matter). If the outcome of the analysis of the claim

term establishes the scope (e.g., boundaries) and meaning

of the patented subject matter, the court (or the Board) has

Case: 22-1750 Document: 41 Page: 8 Filed: 02/07/2024

8 GOOGLE LLC v. ECOFACTOR, INC.

mostly likely construed the claim. See Netword, 242 F.3d

at 1352; see also Trading Techs. Int’l, Inc. v. Open E Cry,

LLC, 728 F.3d 1309, 1319 (Fed. Cir. 2013). Claim construc-

tion may be undertaken prior to or in tandem with the tri-

bunal’s review of the allegedly infringing technology or

prior art. The point in the proceeding at which the analysis

occurs is not dispositive. 2

B.

In view of the foregoing backdrop, we turn back to the

Board’s assessment of the ’753 patent’s [1m] limitation on

appeal. We conclude that the Board construed Claim 1.

The Board stated that “[b]ecause no express construc-

tion is needed for our decision, we do not construe any of

the claim limitations.” J.A. 15. The Board later concluded,

however, that the [1m] limitation “recites five distinct in-

puts upon which the time is based at least in part” and thus

it “requires that each of those inputs be a distinct compo-

nent of the calculation of the ‘first time prior to said target

time.’” J.A. 25. In support of this conclusion, the Board

cited several Federal Circuit cases for the proposition that

2 The Board performs both claim construction and

factfinding application of the claims, as do trial judges in

non-jury cases. However, there are times when different

decisionmakers have responsibility for claim construction

and factfinding application of the construction. For exam-

ple, a trial judge construes a claim and gives that construc-

tion to a jury for application to facts. In this instance, the

jury’s application does not establish a claim construction,

nor does a post-verdict opinion’s substantial evidence re-

view of the application for reasonableness, taking the fur-

nished construction as a given. See Avid Tech., Inc. v.

Harmonic, Inc., 812 F.3d 1040, 1048–49 (Fed. Cir. 2016);

Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314,

1320–21 (Fed. Cir. 2003).

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GOOGLE LLC v. ECOFACTOR, INC. 9

“[w]here a claim lists elements separately, the clear impli-

cation of the claim language is that those elements are dis-

tinct components of the patented invention.” J.A. 25–26

(cleaned up) (first quoting Becton Dickinson & Co. v. Tyco

Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir.

2010); and then citing Engel Indus., Inc. v. Lockformer Co.,

96 F.3d 1398, 1404–05 (Fed. Cir. 1996)). On this basis, the

Board determined that “[t]here is nothing in the asserted

claims to suggest that one piece of data can be used to sat-

isfy multiple inputs.” J.A. 26 (citing CAE Screenplates, Inc.

v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed.

Cir. 2000)). The Board then rejected Google’s theory of un-

patentability because it did “not use each of the five distinct

inputs” and instead “effectively ignore[d] a claim limitation

by double counting.” J.A. 26 (“Petitioner uses the ‘one or

more thermal performance values of said structure’ to sat-

isfy both inputs [i] and [iii].”).

As an initial matter, the Board’s statement that it was

not engaging in claim construction is not dispositive as to

whether claim construction occurred. We have found im-

plicit claim constructions even when the Board does not

recognize that it is construing a claim. For example, in

HTC, we held that “[d]espite no express construction of [a

claim term] below, [the] Board[’s] findings establish[ed] the

scope of the patented subject matter.” HTC Corp., 877 F.3d

at 1367. Those “findings,” we concluded, amounted to

claim construction. See id.

We agree with Google that the Board’s assessment of

the [1m] limitation amounts to claim construction. Here,

the outcome of the Board’s assessment established the

scope of the [1m] limitation. The [1m] limitation lists five

enumerated inputs on which the timing for the system to

activate is “based at least in part on.” ’753 patent, 9:9–10:3.

However, there is nothing on the face of the claim to dis-

cern the scope and boundaries of those inputs, e.g., whether

one input may be calculated based on another input, and

whether they must be distinct or may be entwined. Id. To

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10 GOOGLE LLC v. ECOFACTOR, INC.

determine, as the Board did, that no input can be based in

part on another input and that each input must be distinct,

is to establish a limit to the scope of the [1m] claim limita-

tion. Thus, the Board’s assessment resulted in a construc-

tion of the claim. See Netword, 242 F.3d at 1350

(concluding that the Board effectuated claim construction

where its determination “establish[ed] the scope and

boundaries of the subject matter that is patented”); see also

HTC Corp., 877 F.3d at 1367. The limiting impact of the

Board’s determination is evidenced by the Board’s rejection

of Google’s argument that a prior art reference’s measure-

ment could satisfy both the input for [i] and the input

for [iii]. See J.A. 26. Had the Board instead interpreted

the inputs of [1m] as non-distinct, its basis for rejecting

Google’s argument would evaporate.

The cases relied on by the Board support our determi-

nation that the Board engaged in claim construction. Each

of the cases the Board cited relates to interpreting claims

in the claim construction context. See Becton, 616 F.3d

at 1254; Engel, 96 F.3d at 1404–05; CAE, 224 F.3d at 1317.

And the Board relied on these cases to determine the scope

and meaning of the claims, a claim construction inquiry.

We conclude that the Board’s assessment qualified as

claim construction.

II. The Board’s Claim Construction is Erroneous

We next turn to the Board’s claim construction. Google

argues that the Board’s claim construction is erroneous for

two reasons: (1) the Board’s claim construction violated the

APA; and (2) the limitations imposed by the Board related

to the [1m] inputs are not supported by the intrinsic record

or case law. Appellant Br. 44–57.

A.

The Board’s claim construction did not violate the APA.

“[T]he Board may adopt a claim construction of a disputed

term that neither party proposes without running afoul of

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GOOGLE LLC v. ECOFACTOR, INC. 11

the APA.” Qualcomm Inc. v. Intel Corp., 6 F.4th 1256,

1262–63 (Fed. Cir. 2021) (collecting cases). The Board,

however, cannot, without notice and opportunity for the

parties to respond, change theories midstream by adopting

a claim construction in its final written decision that nei-

ther party requested nor anticipated. SAS Inst., Inc. v.

ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed.

Cir. 2016), rev’d on other grounds, SAS Inst., Inc. v. Iancu,

138 S. Ct. 1348 (2018); see Qualcomm, 6 F.4th at 1263.

The record establishes that the parties disputed the

meaning and scope of the [1m] limitation during the IPR

proceeding under the same framework now on appeal. 3

Starting with its petition, Google argued that the prior art

disclosed inputs [i], [iii], and [iv] because the reference used

inputs [iii] and [iv] to determine input [i]. J.A. 438–39.

EcoFactor argued that Google’s use of the same value for

two inputs contravened the plain language of the claim,

which required distinctly different measurements. See

J.A. 1263, 1265. Google responded in its Reply that there

“is no negative limitation that would prevent” using inputs

[iii] and [iv] to calculate input [i]. See J.A. 1456. In its Sur-

Reply, EcoFactor opposed Google’s argument that the

value in the prior art, a historical temperature measure-

ment, could be used to satisfy the two inputs. See J.A.

1922. According to EcoFactor, this would render parts of

the claim limitation meaningless. Id. While an explicit

3 For this same reason, we reject EcoFactor’s argu-

ment that Google forfeited its claim construction argument

on appeal. Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d

1283, 1290 (Fed. Cir. 2015) (finding no waiver when a

party’s “argument on [an] issue ha[d] been sufficiently con-

sistent” at trial and at the appellate level); see also In re

Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir.

2020) (“[This] court mainly uses the term ‘waiver’ when ap-

plying the doctrine of ‘forfeiture.’”).

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12 GOOGLE LLC v. ECOFACTOR, INC.

claim construction was not proposed by either party, both

parties recognized that the core issue related to the scope

and boundaries of the five inputs enumerated in [1m] and,

thus, were afforded both notice and opportunity to address

this issue. We hold, therefore, that because Google “had

notice of the contested claim construction issues and an op-

portunity to be heard,” the Board’s claim construction of

Claim 1 did not violate the APA. Hamilton Beach Brands,

Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed Cir.

2018).

B.

We turn now to whether the Board’s claim construction

of the [1m] limitation was erroneous. The claim construc-

tion dispute before us is decided solely on intrinsic evi-

dence. 4 The Board determined that the five inputs 5 in the

4 “We are generally hesitant to construe patent

claims in the first instance on appeal.” MyMail, Ltd. v.

ooVoo, LLC, 934 F.3d 1373, 1380 (Fed. Cir. 2019). “Our

hesitancy is intended to avoid conflating de novo review

with an independent analysis.” Id.; see also Wavetronix

LLC v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1355 (Fed.

Cir. 2009). However, in this case, we are effectively review-

ing the Board’s claim construction of the [1m] limitation.

In any event, the parties agree that this claim construction

dispute can be decided purely on the intrinsic record. No-

tably, at oral argument, EcoFactor’s counsel conceded that

if we conclude that the Board erred and that Google’s read-

ing of the claim is correct, reversal on that construction is

appropriate. See Oral Arg. 31:20–31:32; see also id. at

31:33–32:12.

5 The five inputs include: [i] “said one or more ther-

mal performance values of said structure,” [ii] “said perfor-

mance characteristic of said climate control system,” [iii]

“said first internal temperature,” [iv] “said first external

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GOOGLE LLC v. ECOFACTOR, INC. 13

[1m] limitation are “distinct component[s]” that “must be

used distinctly from the other listed input[s],” primarily re-

lying on Becton, 616 F.3d at 1253–54 and Engel, 96 F.3d at

1404 for its conclusion. J.A. 25–27. For the reasons dis-

cussed below, we conclude that the Board erroneously con-

strued the [1m] limitation, which is not limited to inputs

that are entirely separate and distinct.

“When construing claim terms, we first look to, and pri-

marily rely on, the intrinsic evidence, including the claims

themselves, the specification, and the prosecution history

of the patent, which is usually dispositive.” Sunovion

Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d 1271,

1276 (Fed. Cir. 2013). Here, the claim language supports

a broader reading of the [1m] limitation, which must allow

for any of the five claimed inputs to potentially be used to

calculate another claimed input. The claim language

broadly recites that “a first time” is determined “based at

least in part on” each of the five inputs. ’753 patent, 9:47–

61 (emphasis added). This language places no constraint

on the manner in which the inputs are used. A patentee

“is free to choose a broad term and expect to obtain the full

scope of its plain and ordinary meaning unless the patentee

explicitly redefines the term or disavows its scope.”

Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362,

1367 (Fed. Cir. 2012). There is no such redefinition or dis-

avowal here.

Additionally, the specification supports a broader con-

struction of the [1m] limitation than the Board’s construc-

tion. The specification contains no restrictive language and

does not explicitly require that the claim inputs be sepa-

rate. To the contrary, the specification contemplates an

embodiment in which one claimed input is calculated based

on at least one other claimed input. See ’753 patent, 5:47–

temperature,” and [v] “the forecasted temperature.” ’753

patent, 9:50–54.

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14 GOOGLE LLC v. ECOFACTOR, INC.

49. “We normally do not interpret claim terms in a way

that excludes embodiments disclosed in the specification.”

Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir.

2008). In this instance, the Board’s claim construction ex-

cluding such an embodiment is incorrect.

In construing the [1m] limitation, the Board relied on

Becton, 616 F.3d at 1253–54, and Engel, 96 F.3d at 1404.

These cases, however, do not mandate the Board’s narrow

construction of the [1m] limitation. These cases do not cre-

ate a per se rule that separately listed claim elements are

distinct components, regardless of the intrinsic record. In-

deed, in Becton, we looked to the specification to confirm

that the claim element “spring means” was separate from

a hinged arm element. 616 F.3d at 1254. Rather, we have

explained that there is a “presumption” that separately

listed claim limitations may indicate separate and distinct

physical structure, but that presumption may always be re-

butted in the context of a particular patent. See, e.g., Pow-

ell v. Home Depot U.S.A., Inc., 663 F.3d 1221,1231–32 (Fed.

Cir. 2011). Here, the claim language and specification re-

but any presumption that the five inputs listed in the [1m]

limitation are distinct components that must be used dis-

tinctly from other listed inputs.

In construing the [1m] limitation, the Board also relied

on CAE, 224 F.3d at 1317, to support what appears to be a

claim differentiation determination that “nothing in the as-

serted claims [] suggest[s] that one piece of data can be

used to satisfy multiple inputs.” J.A. 26. But the doctrine

of claim differentiation only creates a rebuttable presump-

tion that each claim in a patent has a different scope; it is

a guide, not a rigid rule of claim construction. See Curtiss-

Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374,

1380–81 (Fed. Cir. 2006). Here, the claim language and

the specification rebut such a presumption.

In sum, both the claim language and the specification

support a broader construction than the Board accorded

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GOOGLE LLC v. ECOFACTOR, INC. 15

the [1m] limitation. The proper construction of the term

must allow for any of the five claimed inputs to potentially

be used to calculate another claimed input. We agree, then,

with Google’s proposed construction, which simply “re-

quire[s] that each of the five inputs be used at some point

during the determination of the first time prior to said tar-

get time.” Appellant Br. 52 (emphasis and quotation marks

omitted). Based on the foregoing, we vacate the Board’s

Final Written Decision and remand with instructions that

the Board apply this construction on remand.

CONCLUSION

We conclude that the Board construed the [1m] limita-

tion in Claim 1 and that its construction is erroneous. We

therefore reverse the Board’s construction, vacate the

Board’s Final Written Decision, and remand for further

proceedings under the correct construction of the [1m] lim-

itation.

VACATED AND REMANDED

COSTS

No costs.