The Federal Circuit on Claim Construction and Indefiniteness

In the recent case Intellectual Ventures I LLC v. T-Mobile USA, Inc., the Federal Circuit overturned a district court’s claim construction for reading in a limitation and upheld the district court’s invalidation for indefinite… Read More

“Program,” “UI Code,” Not Means-Plus-Function Terms

The Federal Circuit has held that claim terms “program” and “user interface code,” as used in the phrases “program that can operate the movement of the pointer” and “user interface code being configured to detect one… Read More

Patent Drafting Tip: Take Care with Open-Ended Descriptions

Be careful with the conventional wisdom that tells a patent drafter to use permissive, open-ended language when describing features of an invention.  Like me, you may have been taught to avoid “patent obscenities” like “inv… Read More

Prior Art is What an Internet Search Engine Sees

A decision holding that an a YouTube video is a printed publication under 35 U.S.C. § 102(a) is a reminder that one should always assume that content on the Internet accessible via a public search engine qualifies as prior art. … Read More

Beware Indefiniteness under Williamson and 35 U.S.C. §112(f)

Functional patent claim language not only justified an Examiner’s indefiniteness rejections under 35 USC § 112(b), but also justified a new ground of indefiniteness rejection in In re Xie, Ex parte Appeal 2017-000540, Applicati… Read More

This Patent-Eligibility Decision Could Have Gone Either Way

Providing a common data format for “out-of-band network management” is patent-eligible, said a court in denying a motion to dismiss under FRCP 12 and 35 U.S.C. § 101.  Avocent Huntsville LLC v. ZPE Systems, Inc., No. 3:17-cv… Read More

Written Description Required to Claim Priority from a PCT

The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir.… Read More

“Minimal Redundancy” Makes Patent Claim Indefinite under § 112

The phrase “minimal redundancy” in a patent claim was indefinite under 35 USC § 112 where the patent specification inconsistently described levels of redundancy achieved by its system.  Berkheimer v. HP, Inc., No. 2017-1437… Read More

Written Description Inapplicable to Doctrine of Equivalents

The written description requirement does not extend to equivalents asserted under the doctrine of equivalents, according to a recent order in the District of Delaware. The district judge in Sprint v. Cox resolved dueling summary… Read More

Strategies for Functional Patent Claims

The Federal Circuit’s decision to weaken the presumption against interpreting patent claims under 35 U.S.C. § 112(f) (or 112, sixth paragraph), in Williamson v. Citrix Online, LLC, in 2015, highlighted the challenges that funct… Read More

Upcoming Webinar

The November B2 IP Webinar is being presented by Thomas Bejin, member of Bejin Bieneman, who will provide an update on recent case law and developments associated with willful patent infringement. Mr. Bejin will discuss best practices when considerin…Register

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