Archive | Patent Claim Construction

Not All Patent Prosecution Disclaimers Are Broadly Construed

Not all patent prosecution disclaimers are broadly construed; rather, in construing patent claim terms disclaimers must be closely aligned to actual arguments made during prosecution.  On March 3, 2017 the Federal Circuit in Technology Properties Limited, et al v. Huawei, again gave guidance on the issue of prosecution history disclaimer. The patent at issue in […]

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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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PTAB Applies Precedential Opinion: Broadest Reasonable Interpretation Excludes Conditional Limitation

Here is an important reminder that so-called conditional claim limitations may not be accorded patentable weight, i.e., may be useless in arguing against a patent examiner’s prior art rejections.  In applying a precedential PTAB opinion, a PTAB panel recently affirmed an examiner’s rejection stating that a patent claim was obvious over a combination of references, […]

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Broadest Reasonable Interpretation of Patent Claims Must Be Logically Consistent

Here is ammunition for patent applicants and patent owners alike when examiners, or challengers in Inter Partes Reviews, rely on broad readings of claim language that go beyond a broadest reasonable interpretation: D’Agostino v. Mastercard International. Inc., No. 2016-1592, 2016-1593 (Fed. Cir. Dec. 22, 2016.  In this case, the Federal Circuit vacated a claim construction […]

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How to Address Broadest Reasonable Interpretation in Ex Parte Patent Prosecution

Patent examiners often apply seemingly irrelevant prior art with the blithe statement that a claim rejection is justified by a broadest reasonable interpretation of claim terms.  I offer some tips on combating examiner abuses of broadest reasonable interpretation in this presentation, and in the accompanying paper, presented to the AIPLA’s Patent Law Committee at this […]

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Patent Lessons From a Garbage Bag

Perhaps the most challenging aspect of patent preparation and prosecution is describing an invention in terms that are clear enough to show novelty and non-obviousness, while yet preserving sufficiently broad claim scope to capture potential infringers.  Here is a lesson from the world of garbage bags, in which the Federal Circuit held that a patentee […]

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Federal Circuit Reminder that “Comprising” is Open-Ended in Patent Claims

Construing patent a patent claim whose preamble recited an “electrical power distribution plugstrip comprising in combination” a variety of elements listed in the body of the claim, the Federal Circuit overturned a finding of infringement based on a construction that “the claimed invention was limited to a single, fully-integrated device.”  Server Technology, Inc. v. American […]

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Broadest Reasonable Interpretation Gives Little Weight to Claiming a Functional Result

The Federal Circuit has upheld the Patent Trial and Appeal Board’s broadest reasonable interpretation of claims including “a restore application starting a restore of a set of files” in an Inter Partes Review proceeding.  Veritas Techs. LLC v. Veeam Software Corp., No. 2015-1894 (Fed. Cir. Aug. 30, 2016).  This case will garner attention for the […]

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Patent Claim Construction Lessons, or Not, from Indacon v. Facebook

When a case goes against the patentee on the issue of claim construction, one wonders whether different actions by patent prosecution counsel could have changed the result. The prosecutor uniquely influences claim construction, a legal determination that is unlike the question of infringement, which depends on the accused infringer’s products, and validity, which often turns […]

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Federal Circuit Upholds Claim Construction Limiting Claim Scope to Disclosed Embodiments

The Federal Circuit recently limited construction of patent claims to a scope supported by intrinsic evidence of embodiments disclosed in a patent specification. Ruckus Wireless, Inc. v. Innovative Wireless Solutions, 2016 U.S. App. LEXIS 9786 (Fed. Cir. May 31, 2016). In a 2-1 decision, the panel upheld the district court’s construction of the asserted claims, […]

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