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 […]
Archive | Patent Claim Construction
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 […]
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 […]
Broadest Reasonable Interpretation Gives Little Weight to Claiming a Functional Result
By Charles Bieneman on August 31, 2016 in Broadest Reasonable Interpretation, Patent Claim Construction
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 […]
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 […]
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, […]
Does Claim Construction Matter in Determining Patent-Eligibility under 35 U.S.C. § 101?
By Charles Bieneman on April 26, 2016 in America Invents Act, Covered Business Method Patent Review, Patent Claim Construction, Patentable Subject Matter
Patent applicants and owners should position claims for narrow constructions where subject matter is susceptible to challenge under 35 U.S.C. § 101, suggests a recent decision from the USPTO’s Patent Trial and Appeal Board (PTAB). In a Covered Business Method (CBM) review Final Written Decision, the PTAB held that claims of U.S. Patent No. 8,402,281, […]
Federal Circuit Reverses PTAB Claim Construction as Unreasonably Broad
The Federal Circuit recently clarified that the “broadest reasonable interpretation” of claims construed in an inter partes review (“IPR”) must still be “reasonable.” In PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, No. 2015-1564 (Fed. Cir. Feb. 22, 2016), the court vacated and remanded a decision from the Patent Trial and Appeal Board (“PTAB”) […]
Federal Circuit Affirms PTAB’s CBM Determinations
By Charles Bieneman on December 20, 2015 in America Invents Act, Covered Business Method Patent Review, Patent Claim Construction
The PTAB was not arbitrary and capricious in determining that patent claims directed to transmitting digital data were Covered Business Method (CBM) claims, despite a seeming recitation of technological elements, and an omission of any explicit recitation of a financial element. SightSound Technologies v. Apple, Inc., No.s 2015-1159, 2015-1160 (Fed. Cir. Dec. 15, 2015). Although […]
PTAB Reverses Rejection Because Patent Examiner Applied a “Broader Than Reasonable Interpretation”
By Charles Bieneman on December 9, 2015 in Patent Claim Construction, Section 102 and 103 Invalidity
Patent examiners often rely on claim interpretations that seem ridiculous to applicants. Here is a case showing that applicants should push back in such situations when claims are rejected under a “broadest reasonable interpretation.” Moreover, the case shows applicants that, contrary to examiners’ admonitions that the specification will not be read into the claims, clear […]