Author Archive | Chris Francis

PTAB Finds Reasoning for 103 Rejection Insufficient in Ex Parte Appeal

Citing KSR Inti Co. v. Teleflex Inc, the PTAB in Ex Parte Mattisson (Appeal No. 2016-004484, April 14, 2017) agreed with the ex parte Appellants and reversed the Examiner’s rejection based on insufficient rationale to support an obviousness rejection. Specifically, the PTAB held that the Examiner’s reasoning that “a person of ordinary skill would not […]

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Markman Construction of “Controller” in the District of Delaware

The order for the Markman construction in Avid Technology, Inc. v. Harmonic Inc. (DED, Docket 12-627) was issued on May 2, 2017. The case involves U.S. Patent No. 5,495,291 titled “Decompression system for compressed video data for providing uninterrupted decompressed video data output.” The Court construed the term “controller” to mean “a component or subsystem […]

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Court Construes “Coupled” and “Extending Continuously” in Markman

The terms “coupled” and “continuously” both find their way into mechanical patent claims, and often times have specific meanings intended by the drafter. The order for the Markman construction in Swimways Corp. v. Aqua-Leisure Industries (EDVA, Docket 2:16cv260) was issued on April 24, 2017 and gives an example of claim construction of these terms. With respect to “coupled,” the […]

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“Substantially” is a Definite Term in Recent PTAB Decisions

Many practitioners view words of approximation, such as “substantially,” as useful tools to broaden claim language. MPEP §2173.05(b) states that words of approximation are acceptable if one of ordinary skill in the art would understand what is claimed, in light of the specification. In fact, MPEP §2173.05(b)III discusses the acceptable use of various words of […]

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Arguments of Impermissible Change in the Principle of Operation in Ex Parte PTAB Decisions

In roughly the last month, the PTAB has decided 41 ex parte appeals involving arguments that the proposed modification in an obviousness rejection impermissibly changes the principle of operation of the primary reference. By way of background, this type of argument, including caselaw, is outlined in MPEP §2143.01 IV. Of the 41 recent decisions, only […]

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PTAB Unpersuaded by Evidence of Commercial Success

The burden on an Appellant is seemingly high when arguing commercial success as a secondary consideration of nonobviousness in an ex parte PTAB appeal.  The decision in Ex parte Thatcher, Appeal No. 2015-002163 (April 4, 2017) is an example of the PTAB remaining unpersuaded by arguments of commercial success. The patent application at issue claims […]

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PTAB: BRI of Method Claim Requires Conditional Limitation

Thirty-five PTAB decisions cite Ex parte Schulhauser since that case was designated precedential in October 2016.  Of those thirty-five decisions, all except for one held that the broadest reasonable interpretation of a method claim does not require conditional limitations.  The one exception is Ex parte Hehenberger, Appeal No. 2015-007421 (Jan. 31, 2016). By way of […]

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CAFC Rejects Construction of “Controller” in Patent Claim

In a de novo review of claim construction, the Federal Circuit rejected the District Court’s (ILND) claim construction of the patent claim term “controller” in The Chamberlain Group, Inc. v. Techtronic Industries Co. LTD (Fed. Cir. 2017). The District Court had granted the plaintiff-appellee’s motion for a preliminary injunction.  The Federal Circuit disagreed with the District […]

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PTAB Broadest Reasonable Interpretation: “in response to” Means “subsequent to”

In an ex parte appeal, the PTAB upheld the Examiner’s broadest reasonable interpretation of the patent claim language “in response to” as merely meaning “subsequent to.”  The decision is Ex parte Youngri Kim et al. (PTAB Jan 19, 2017). The subject patent application is drawn toward an ebook reader, and the claim language at issue […]

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PTAB Upholds Indefiniteness Rejection of Inferentially Claimed Element

One of the first rules often taught to a young patent attorney, especially for mechanical apparatus claims, is to avoid inferential claiming, i.e., avoid introducing a new element in the middle of a recitation of another element.  This type of drafting can lead to ambiguity about whether this new term is positively recited, and thus […]

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