Archive | Broadest Reasonable Interpretation

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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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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