United States Court of Appeals 

for the Federal Circuit ______________________ 

TF3 LIMITED,

Appellant

v.

TRE MILANO, LLC,

Appellee

______________________ 

2016-2285

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2015-

00649.

______________________ 

Decided: July 13, 2018

______________________ 

 BRADFORD J. BADKE, Sidley Austin LLP, New York, 

NY, argued for appellant. Also represented by CHING-LEE 

FUKUDA; THOMAS ANTHONY BROUGHAN, III, ANNA 

MAYERGOYZ WEINBERG, Washington, DC.

 JEFFREY GLENN SHELDON, Cislo & Thomas LLP, Los 

Angeles, CA, argued for appellee. Also represented by 

LAURA LLOYD; DOUGLAS HUNT MORSEBURG, Leech Tishman Fuscaldo & Lampl, LLC, Pasadena, CA; THOMAS J.

PEISTRUP, Tre Milano, LLC, Culver City, CA.

______________________ 
2 TF3 LIMITED v. TRE MILANO, LLC

Before NEWMAN, LOURIE, and HUGHES, Circuit Judges.

NEWMAN, Circuit Judge. 

TF3 Limited (“TF3”) appeals the decision of the Patent Trial and Appeal Board (“PTAB” or “Board”)1 in an 

inter partes review of U.S. Patent No. 8,651,118 (“the ’118 

Patent”), requested by Tre Milano, LLC. Tre Milano 

challenged the validity of claims 1–5 and 11, and did not 

challenge the validity of claims 6–10 and 12–15 of the ’118 

Patent. The PTAB instituted review of all of the claims 

that were challenged.

We conclude that the Board erred in its finding of anticipation, for the Board erroneously construed two claim 

terms: “the length of hair can pass through the secondary 

opening” and “free end,” broadening the claims beyond the 

description in the ’118 Patent specification. On the correct claim construction, the claims are not anticipated. 

I 

BACKGROUND

A. The ’118 Patent

The ’118 Patent is for a “hair styling device” that automates the curling of hair. In operation, a strand of hair 

is fed into a chamber of the device, the hair is wound 

around a rotating curling member in the chamber, the 

wound hair is heated to preserve the curl, and the curled 

hair slides off the curling member and exits the chamber. 

TF3 explains that “because the secondary opening 50 is 

annular and surrounds elongate member 20 the length of 

hair is not required to pass any obstruction or otherwise 

be forced to uncurl during its removal from the hair 

 

1 Tre Milano, LLC v. TF3 Ltd., IPR2015-00649, Paper No. 37 (P.T.A.B. May 2, 2016) (“Board Op.”); 2015 WL 

3901718 (P.T.A.B. June 22, 2015) (“Institution Dec.”).
TF3 LIMITED v. TRE MILANO, LLC 3

styling device 10, so that the curvature of the curls created by the device can be substantially maintained.” ’118

Patent, col. 6, ll. 39–44.

Figures 1 and 2 show the claim elements related to 

this appeal: the elongate member 20, primary opening 24, 

secondary opening 50, and movable abutment 52: 

In operation the device receives a section of hair 26

through primary opening 24 into chamber 16. A motordriven rotatable element 34 rotates and its leading edge

38 engages and captures the hair 26. The rotating element winds the hair around elongate member 20 until it 

reaches abutment 52. The abutment prevents twisting of 

the hair by stopping the hair from rotating around the 
4 TF3 LIMITED v. TRE MILANO, LLC

free end of the elongate member 20. The wound hair is 

then heated. The user then releases the grip on handle 

parts 60 and 62, see Fig. 2, automatically moving abutment 52 from its closed position to its open position, and 

releasing the curled hair through the second opening 50. 

Claim 1 is deemed representative:

1. A hair styling device having:

a body defining a chamber adapted to accommodate a length of hair, the chamber having a primary opening through which the length of hair 

may pass into the chamber;

a rotatable element adapted to engage the length 

of hair adjacent to the primary opening;

an elongate member around which, in use, the 

length of hair is wound by the rotatable element, 

the elongate member having a free end;

the chamber having a secondary opening through 

which the length of hair may pass out of the 

chamber, the secondary opening being located adjacent to the free end; and

a movable abutment which can engage the length 

of hair in use, the movable abutment having an 

open position in which the length of hair can pass 

through the secondary opening, and a closed position in which the length of hair is retained within 

the chamber, wherein the moveable abutment is 

located within one of (i) the secondary opening, 

(ii) the primary opening, and (iii) a passageway 

connecting the secondary opening to the primary 

opening.

Dependent claims 2–5 and 11 add limitations specifying 

the position of the movable abutment and the shape of the 

secondary opening.
TF3 LIMITED v. TRE MILANO, LLC 5

B. The Prior Art

The Board instituted review on two grounds: anticipation by U.S. Patent No. 4,148,330 (“Gnaga”) and/or anticipation by Japanese Patent Application No. 61-10102 

(“Hoshino”).

The Gnaga reference, titled “Motor-Curler Unit for 

Automatic Application of Curlers to the Hair to be Treated,” shows a hair-curling device in which curler A, composed of internal portion B and external portion C, is 

inserted into the device at housing D. The hair is wound 

around the rotating curler and heated, and the curler

carrying the hair is ejected and disassembled, allowing 

removal of the hair by unwinding from the curler. Figures 6 and 7 depict the Gnaga device: 

Gnaga, Figs. 6, 7.

The Hoshino reference describes a hair-curling device 

in which a curler is inserted into a winding structure, hair 

is wound around the rotating curler, supported by a lock 

lever and hair guide arm, and then the curler carrying the 
6 TF3 LIMITED v. TRE MILANO, LLC

hair is ejected from the device and disassembled, allowing 

removal of the curl by unwinding from the curler. 

J.A. 631 (Hoshino Translation). Hoshino Figures 1 and 2

illustrate the device, including curling member 9, lock 

lever 25, and hair guide arm 16.

Hoshino, Figs. 1, 2.

C. The Board Decision

The Board held that Gnaga and Hoshino each shows 

the same device as claimed in the ’118 Patent, rendering 

the claims invalid for anticipation. However, as is apparent, the devices are not the same. Anticipation was 

decided on a flawed analysis, whereby the ’118 Patent 
TF3 LIMITED v. TRE MILANO, LLC 7

claims were construed to have a breadth beyond the scope 

supported by the device described in the ’118 Patent, the 

Board then holding that the unduly broad ’118 Patent 

claims read on the different Gnaga and Hoshino devices 

and thus are anticipated.

The Board construed “free end” to mean “an end of the 

elongate member that is unsupported when the movable 

abutment is in the open position.” Board Op. at *13. The 

Board rejected TF3’s proposed construction of “the length 

of hair can pass through the secondary opening” to mean

“when the abutment is in its open position, the styled 

length of hair is allowed to slide along the elongate member towards and subsequently off its free end,” id., instead 

determining that claim 1 “does not require that the length 

of hair is allowed to slide along the elongate member 

towards and subsequently off its free end.” Id. at *16.

Based on these constructions, the Board rejected 

TF3’s argument that “Gnaga lacks (1) an elongate member having a free end, (2) a secondary opening adjacent to 

the free end, and (3) a movable abutment having an open 

position in which the length of hair can pass through the 

secondary opening, all present at the same time in a hair 

styling device,” finding the argument “not persuasive” 

because the argument relied upon TF3’s proposed claim 

construction. Id. at *23–24. 

The Board also found that Hoshino anticipates the 

’118 Patent device, stating, “[W]e agree with Petitioner 

that Hoshino teaches every element of claim 1. . . . Patent 

Owner’s argument that in Hoshino’s device, hair does not 

slide along and off the elongate member is not persuasive 

because we do not agree that allowing hair to slide along 

the elongate member and subsequently off its free end is a 

requirement of claim 1.” Id. at *30.

TF3 appeals, stating that on the correct claim construction and the correct law of anticipation, the claims 

are not anticipated. 
8 TF3 LIMITED v. TRE MILANO, LLC

DISCUSSION

“Anticipation” in patent usage means that the claimed 

device is not new; that it previously existed. See In re 

Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[T]he reference must describe the applicant’s claimed invention 

sufficiently to have placed a person of ordinary skill in the 

field of the invention in possession of it.”); In re Donohue, 

766 F.2d 531, 533 (Fed. Cir. 1985) (“It is well settled that 

prior art under 35 U.S.C. § 102(b) must sufficiently describe the claimed invention to have placed the public in 

possession of it.”). Neither Gnaga nor Hoshino describes 

the same device as claimed in the ’118 Patent.

The Board’s error apparently arose from its “construction” of the claims more broadly than the description in 

the ’118 Patent specification, thereby enlarging the claims 

beyond their correct scope. However, when the claims are 

construed as the subject matter is described in the specification, they are not anticipated by the Gnaga and 

Hoshino devices.

“The length of hair can pass through the secondary 

opening”

The Board declined to construe “the length of hair can 

pass through the secondary opening,” as set forth in the 

specification, instead ruling that in accordance with the 

broadest reasonable interpretation, “claim 1 does not 

require that the length of hair is allowed to slide along the 

elongate member towards and subsequently off its free 

end.” Board Op. at *13–16.

TF3 states that the correct construction requires the 

wound hair to slide along the elongate member and pass 

out of the chamber in its curled shape. TF3 states that 

this is the description in the specification, and that the 

claims are not reasonably construed more broadly, even

under the broadest reasonable interpretation standard. 

“Above all, the broadest reasonable interpretation must 
TF3 LIMITED v. TRE MILANO, LLC 9

be reasonable in light of the claims and specification.” 

PPC Broadband, Inc. v. Corning Optical Commc’ns RF, 

LLC, 815 F.3d 747, 755 (Fed. Cir. 2016) (emphasis in 

original); see Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 

1292, 1298 (Fed. Cir. 2015), overruled on other grounds by 

Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) 

(en banc) (“A construction that is unreasonably broad and 

which does not reasonably reflect the plain language and 

disclosure will not pass muster.” (internal quotation

marks and citation omitted)). 

We conclude that the Board erred in its claim construction. The specification describes how the curled hair 

is removed from the device:

It is arranged that the abutment 52 in its open 

position allows the styled length of hair to pass 

out of the secondary opening 50, i.e., to slide along 

the elongate member 20 towards and subsequently off its free end. Little force is required to separate the hair styling device 10 from the length of 

hair which has been styled . . . the length of hair 

is not required to pass any obstruction or otherwise be forced to uncurl during its removal from 

the hair styling device 10 . . . .

’118 Patent, col. 6, ll. 33–42. However, the Board held 

that the description “can pass through a secondary opening” is not limited to requiring a secondary opening. The

Board found it “irrelevant” as to whether claim 1 “requires that hair slides along and off the elongate member 

in passing through the secondary opening.” Board Op. at 

*14. Instead, the Board found that, “We do not understand the use of ‘i.e.’ . . . to signify that passing out of the 

secondary opening always must be accomplished by 

sliding along and off the elongate member.” Id. at *15. 

The Board erred in this analysis, for the specification uses 

the abbreviation “i.e.” for the mode whereby the curl 

slides out of the device without stretching or uncurling. 
10 TF3 LIMITED v. TRE MILANO, LLC

The usage “i.e.” (“id est” or “that is”), “signals an intent to 

define the word to which it refers.” Edwards Lifesciences 

LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009); see 

SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1202 

(Fed. Cir. 2013) (“i.e.” is definitional when it “comports 

with the inventors’ other uses . . . in the specification and 

with each and every other reference”).

The ’118 Patent describes the device as improving curl 

retention by the structure that “permits a formed curl to 

be slid off the end of the elongate member without being 

uncurled.” ’118 Patent, col. 2, ll. 9–11. Neither the Gnaga 

nor the Hoshino device has such a structure. The claims 

of the ’118 Patent are not reasonably construed to include

a device and method that are not described. As in Enzo 

Biochem Inc. v. Applera Corp., 780 F.3d 1149, 1156–57

(Fed. Cir. 2015), the claim construction was erroneously 

broadened to include subject matter contrary to the 

description in the specification.

Claims are construed in light of the specification. See

Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1322–23 

(Fed. Cir. 2015) (“The terms used in patent claims are not 

construed in the abstract, but in the context in which the 

term was presented and used by the patentee, as it would 

have been understood by a person of ordinary skill in the 

field of the invention on reading the patent documents. . . . Thus, a claim receives the meaning it would 

have to persons in the field of the invention, when read 

and understood in light of the entire specification and 

prosecution history.”); Phillips v. AWH Corp., 415 F.3d 

1303, 1315 (Fed. Cir. 2005) (en banc) (“The claims, of 

course, do not stand alone. Rather, they are part of a 

fully integrated written instrument, consisting principally 

of a specification that concludes with the claims. For that 

reason, claims must be read in view of the specification, of 

which they are a part.” (internal quotation marks and 

citations omitted)). 
TF3 LIMITED v. TRE MILANO, LLC 11

Tre Milano defends the Board’s finding of anticipation, arguing that there is not “a clear indication in the 

intrinsic record that the patentee intended the claims to 

be so limited,” citing Dealertrack, Inc. v. Huber, 674 F.3d 

1315, 1327 (Fed. Cir. 2012). However, it is not reasonable 

to read the claims more broadly than the description in

the specification, thereby broadening the claims to read 

on the prior art over which the patentee asserts improvement. 

The elongate member having a “free end”

The Board construed “free end” to mean “an end of the

elongate member that is unsupported when the movable 

abutment is in the open position.” Institution Dec. at *6. 

Based on this construction, the Board found a reasonable 

likelihood that Gnaga or Hoshino or both disclose a “free 

end” on the curler, because when the curler in the references is not locked in place, it has “a free end.” Id. at *7–

10. This construction was based in part on finding that, 

when given their broadest interpretation, the ’118 Patent 

claims do not require that the movable abutment operates 

as described in the specification. Thus the Board construed the claims as unlimited by the specification. 

At the PTAB trial, the undisputed evidence was that 

this construction of “free end” was incorrect. The specification is clear that the free end is not a structural support, but an end over which the curl slides. This is the 

description in the specification. Tre Milano does not point 

to any contradictory description. Nonetheless, the Board 

stated in its final decision that “the Figures in the ’118 

patent, [show] abutment 52 may provide some structural 

support to the free end 20 when abutment 52 is in the 

closed position.” Board Op. at *8.

Claims are construed with reference to the specification and prosecution history, for these are the resources 

by which persons in the field of the invention understand

what has been invented. Here, the specification states 
12 TF3 LIMITED v. TRE MILANO, LLC

that the “free end” of the elongate member is located 

adjacent to the secondary opening. ’118 Patent, col. 9, ll. 

39–41. The elongate member and movable abutment are 

described in the specification as separated structures

where the “free end” of the elongate member is located 

adjacent to the secondary opening. Id., col. 9, ll. 38–50; 

id., col. 7, l. 65–col. 8, l. 12. The movable abutment may 

be located in (i) the secondary opening, (ii) the primary 

opening, or (iii) a passageway connecting the secondary 

opening to the primary opening, id., col. 9, ll. 46–50, and

the alternative positions of the movable abutment cannot

provide support to the free end of the elongate member, 

which must be located adjacent to the secondary opening. 

The Board’s requirement for the free end to have “structural support” from the movable abutment is contrary to

the specification. 

The ’118 Patent claims, construed in light of the specification, do not read on the prior art and are not anticipated by the prior art. See Bristol-Myers Squibb Co. v. 

Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 

2001) (“that which would literally infringe if later anticipates if earlier”).

* * * 

Neither the Gnaga nor the Hoshino reference shows 

the same device having the same structure and operating 

in the same way as claimed in the ’118 Patent. Gnaga 

and Hoshino both show hair styling devices in which the 

elongate member—the curler—is ejected from the device 

along with the curled segment of hair, after which the 

curled hair is separated. TF3 stresses that in the ’118 

Patent device there is no removal of a curling element 

carrying curled hair, no subsequent disassembly of the 

curling element, no unwinding of the curl. Instead, in the 

’118 Patent device, the curled hair slides out of the device 

in curled form. The correct constructions of “elongate 

member having a free end” and “the length of hair can 
TF3 LIMITED v. TRE MILANO, LLC 13

pass through the secondary opening” implement these

distinctions from the Gnaga and Hoshino devices. 

The Board’s decision of anticipation was based on an 

improper enlargement of the claims. See SunRace Roots 

Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1306 (Fed. Cir. 

2003) (“Whether an invention is fairly claimed more 

broadly than the ‘preferred embodiment’ in the specification is a question specific to the content of the specification, the context in which the embodiment is described, 

the prosecution history, and if appropriate the prior art.” 

(internal quotation marks and citation omitted)). The 

Board’s analytic procedure was incorrect. Claims cannot 

be “anticipated” by devices that are not the same. Invalidity for anticipation requires that “[t]he identical invention must be shown in as complete detail as contained in 

the patent claim.” Richardson v. Suzuki Motor Co., 868 

F.2d 1226, 1236 (Fed. Cir. 1989); see In re Skvorecz, 580 

F.3d 1262, 1266 (Fed. Cir. 2009) (“A rejection for ‘anticipation’ means that the invention is not new. Anticipation 

requires that all of the claim elements and their limitations are shown in a single prior art reference.”). Not only 

must each claim element be shown in a single reference, 

but the elements must be “arranged or combined in the 

same way as recited in the claims.” Net MoneyIN, Inc. v. 

VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008); 

Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 

(Fed. Cir. 1983) (“Anticipation requires the presence in a 

single prior art disclosure of all elements of a claimed 

invention arranged as in the claim.”).

The conclusion of invalidity on the ground of anticipation cannot stand, and is reversed. 

REVERSED