Specification Provides Insufficient Structure for MPF Claim

Granting summary judgement to a defendant accused of patent infringement, a court held two patent claims including the term “control unit” indefinite, finding the description in the specification of a “tone control circuit… Read More

Patent Claims Held Indefinite for Mixed Apparatus and Method

In a Claim Construction Memorandum and Order, a court recently held a claim term indefinite for mixing an apparatus and a method. Wireless IP Holdings, L.P., v. Samsung Electronics Co., Ltd., et al. No. 2:18-CV-28-JRG, (E.D. Texas… Read More

Language From CIP Survives “New Matter” Challenge

Finding that the Patent Trial and Appeal Board failed to consider the entire record, the Court of Appeals of the Federal Circuit vacated and remanded for further analysis the Board’s decision affirming a rejection of claims for… Read More

CAFC Affirms Rejections of Computer Product-by-Process Claim

The Federal’s circuit has affirmed a Patent Trial and Appeal Board (PTAB) decision in turn affirming a patent examiner’s rejections under 35 U.S.C. § 101 for lack of patent-eligibility, and under 35 U.S.C. § 112 for lack of… Read More

§ 112 Indefiniteness for Mixing Claims to Apparatus and Method

Claims in a patent directed to medical diagnostics were indefinite under 35 U.S.C. §112(b) and Nautilus, Inc. v. Biosign Instruments, Inc. (S. Ct. 2014), said a court in granting summary judgment of invalidity. Lecat’s Ven… Read More

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

Upcoming Webinar

Christoper Francis and Charles Bieneman will conduct a two-part webinar to discuss best practices for preparing, and then prosecuting, patent applications at the USPTO. The presentation will dive underneath the basic legal requirements to provide ade…Register

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