Christopher Francis

Principal author for The Claims Interpreted Report

Another Example of Claim Differentiation

Claim differentiation was one factor that led the Federal Circuit to affirm the PTAB’s claim construction in the appealed IPR in Realtime Data, LLC v. Iancu (Fed. Cir., Appeal No. 2018-1154, decided Jan. 10, 2018).  This case also involves an interesting issue regarding obviousness and motivation to combine, and Dennis Crouch has summarized that issue on his blog at PatentlyO.com.  This quick post below focuses on the claim construction of the phrase “maintaining a dictionary.” By way of background, the opinion notes that “dictionary encoding is a form of lossless data compression that assigns a code word to a particular data string, maps that code word to an index, and replaces every matching data string with the corresponding code word…This assignment would be mapped to an index, or dictionary.” The independent claim at issue reads: 1. A method for compressing input data comprising a plurality of data blocks, the method comprising the steps of: detecting if the input data comprises a run-length sequence of data blocks; outputting an encoded run-length sequence, if a run-length sequence of data blocks is detected; maintaining a dictionarycomprising a plurality of code words, wherein each code word in the dictionary is associated with a unique data… Read More »Another Example of Claim Differentiation

“At Least One Piece” Can Mean the Whole Thing

The Federal Circuit held that the broadest reasonable interpretation of “at least one piece” of a computer file can include the entire computer file in the absence of further limitation in the claim or definition in the specification. AC Technologies v. Amazon.com, Inc. (Appeal No. 218-1433; Decided January 9, 2019). The patent at issue is directed toward storing copies of data across a network to improve data integrity and reduce network lag. To accomplish this, the system copies data redundantly across the network.  The relevant claim at issue reads: 1. A data management system comprising: … at least one computer unit that stores at least one complete file, each file including a plurality of individual pieces, the pieces containing parts of the files, wherein at least one piece is stored in a redundantmanner in the at least two data storageunits; …   In the underlying IPR, which was appealed in this case, the patent holder argued that the claim must be properly construed to require redundantly storing file pieces, not the complete file.  The Board reasoned that because the independent claim recites “at least one piece,” the claims contemplate copying and storing more than one piece of a file, including up to… Read More »“At Least One Piece” Can Mean the Whole Thing

When an Examiner Can Use a Dictionary: Guidance from In Re Smith International

In In Re Smith International, the Federal Circuit stated that the broadest reasonable interpretation of a claim term must be consistent with the specification, as discussed in a previous post.  So does that have any effect on the Examiner’s ability to use extrinsic evidence, such as a dictionary definition, to interpret a claim term?  The two ex parte PTAB appeals discussed below cite In Re Smith Internationaland provide some guidance. In Ex parte Boeke, Appeal 2016-002873 (decided May 2018), the claim included “at least one discharge slot having a first portion that includes an oval geometry.”  The specification distinguished “oval” from “racetrack shape” with reference to Figures 4 and 5, reproduced below.  Specifically, the specification defined “oval” as having “no straight portions, see Fig. 5,” and defined “racetrack shape” as “ “includes two flat sides 90, 92, see discharges slots 80B of FIGS. 3 and 4.” The rejection was based on a racetrack-shaped hole in the prior art.  The Examiner asserted that this hole in the prior art has an “oval geometry” because the dictionary definition of “oval” is “an elliptical track, as for racing or athletic events.”  The Board reversed the Examiner because the dictionary definition conflicted with the specification of the… Read More »When an Examiner Can Use a Dictionary: Guidance from In Re Smith International

Ex Parte Jung De-Designated as Informative by PTAB

A previous post discussed Ex parte Jung, which was designated as Informative by the PTAB on July 10, 2018.  In a bulletin posted on August 7, 2018, the PTAB states that: It has come to PTAB’s attention that the decision has not been read as intended. For example, the designation was not intended to reflect new or changed policies with respect to claim construction. As a result, in order to avoid any confusion, the decision has been de-designated and removed from the list of informative decisions. The case remains a routine decision of the Board… This case nonetheless raised an interesting discussion of SuperGuide Corp. v. DirecTv Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004), which interpreted language in the form of “at least one of A and B” to mean at least one of A and at least one of B, as well as the line of subsequent cases discussed in the Jungdecision that distinguish SuperGuide.  Anecdotally, it appears that a common practice has been to avoid claiming in the form of “at least one of A or B” because “or” sometimes invites an indefiniteness rejection, and instead to claim in the form of “at least one of A and B” with the intention… Read More »Ex Parte Jung De-Designated as Informative by PTAB

“At Least One of” Ex Parte Opinion Designated as Informative by PTAB

The PTAB interpreted claim language in the form of “at least one of A and B” to mean at least one of A and at least one of B in Ex parte Dong-Shin Jung et al. (Appeal No. 2016/008290, designated Informative on July 10, 2018).  The claim, in pertinent part, at issue reads: A method for playing back a scene using Universal Plug and Play (UPnP), comprising: [A.] sending, by a control point, a request for a scene to be played back to a media server that stores Audio/Video (AV) content; [B.] receiving, by the control point, one or more scene objects comprising the scene to be played back from the media server in response to the request, each scene object including metadata representing at least one of [i.] a precedence relation indicating the scene object’s location in a sequence of scene objects and [ii.] a connection relation indicating one or more scene objects capable of replacing the scene object, the connection relation including at least one of [1.] a connection branch and [2.] a contents connection list having a first group identification… During examination, the Examiner interpreted the claim language in the form of “at least one of A… Read More »“At Least One of” Ex Parte Opinion Designated as Informative by PTAB

Reversal of Parts Not Obvious in the Absence of Supporting Evidence

The ex parte Appellant successfully argued that the Examiner had not established a prima facie case of obviousness by failing to adequately explain why one skilled in the art would have made the proposed modification in Ex parte Tisol (Appeal No. 2017-007929, decided April 25, 2018). The claim at issue is reproduced below with emphasis added: A system for manufacturing a two-part fastener, the system comprising: a fastener-molding housing including a fastener mold having a first mold section connected to a second mold section through a flash connection mold section, wherein the fastener mold is configured to receive fastener-forming material to form a pre-engaged fastener having a first fastener portion within the first mold section and a second fastener portion within the second mold section, wherein the first fastener portion is temporarily secured to the second fastener portion through a flash connection portion formed within the flash connection mold section; and an actuating assembly including a stripper plate, a connecting member having a distal beam within a retaining sleeve that is moveably secured to the stripper plate, and at least one ejection member, wherein the connecting member is configured to securely retain the first fastener portion, wherein the stripper plate… Read More »Reversal of Parts Not Obvious in the Absence of Supporting Evidence

“A” Fabric Member is Limited to Single, Continuous Member

The Federal Circuit broke from the typical open-ended construction of “a” to mean “one or more,” and instead limited “a” to mean “one single, continuous member” in the nonprecedential opinion for Wonderland Nurserygoods, Co. v. Baby Trend, Inc. (Appeal Nos. 2017-1295 and 2017-1297; Decided April 19, 2018). A representative claim from the patent at issue (RE43,919) is as follows, with emphasis added: 1. A baby crib comprising: a bed frame structure including a plurality of upright tubes, each of which has a an inner tube wall, and an outer tube wall defining an outer contour shape of the upright tube, the inner tube wall defining a receiving hole, and the outer tube wall having an outwardly facing surface and a slit that extends along the length of said outer tube wall and that is in spatial communication with said receiving hole; a fabric member mounted on said bed frame structure to define a surrounding wall around said bed frame structure and delimit an enclosed space adapted to receive a baby; and a plurality of positioning posts mounted on said fabric member and inserted respectively into said receiving holes in said upright tubes, said fabric member being clamped between each of said upright… Read More »“A” Fabric Member is Limited to Single, Continuous Member

Coffin Patent Lives on after IPR

The Federal Circuit agreed with the Patent Trial & Appeal Board that the claim language “form a casket body” was a structural limitation, not an intended use, and affirmed the final written decision of PTAB finding that the inter parte review petitioner failed to demonstrate that the claims were unpatentable.  Matthews International Corp. v. Vandor Corp. (Fed. Cir., decided March 27, 2018). The patent at issue is US8,104,151 and claim 1 reads as follows, with emphasis added: 1. A casket arrangement having a first configuration and a second configuration, comprising: a bottom panel formed of a pliable material; side panels formed intrinsically with the bottom panel of the pliable material, each side panel including a lower section and an upper section foldably attached thereto, the lower section extending vertically upward from the bottom panel, the upper section in the first configuration extending upward from the lower section and in the second configuration extending in a direction other than vertically upward from the lower section; end panels formed intrinsically with the bottom panel of the pliable material, each end panel including a lower end panel, and an upper end panel, the lower end panel extending vertically upward from the bottom panel… Read More »Coffin Patent Lives on after IPR

Examiner’s Redundancy Rationale was Insufficient to Support Obviousness Rejection

The ex parte Appellant successfully argued that, since the primary reference already taught fastening an element with screws, the Examiner failed to adequately show that one would have also fastened the element with a spring element because the spring element would be merely duplicative of the screws in Ex parte Pinon (Appeal 2017/005566, decided March 9, 2018).  While this is just one of the successful arguments in this Appeal, it provides some interesting discussion. The Examiner had found that the primary reference taught all of the elements of the claim except “the clamp comprises a spring element,” as claimed in claim 1.  The primary reference, shown immediately below, discloses a battery module having a clamp 40a that is fastened to the plate 30 with screws.    Since the screws of the primary reference are not a “spring element,” as claimed in the claim, the Examiner found a secondary reference disclosing a power supply unit that includes an elastic clamp, and asserted that it would have been obvious to include this elastic clamp in the primary reference in addition to the screw-fastened clamp 40a.  In the Examiner’s Answer, the Examiner noted that this redundancy is akin to wearing a belt and suspenders.… Read More »Examiner’s Redundancy Rationale was Insufficient to Support Obviousness Rejection

CAFC Finds Proposed Claim Construction Unsupported by Disclosure

The Federal Circuit in Steuben Foods, Inc. v. Nestle, Inc. (Appeal No. 2017-1290, Fed. Cir., decided March 13, 2018) rejected the patent owner’s claim construction as impermissibly restricting the claim term to a specific embodiment disclosed in the specification.  Based on this claim construction, the Court affirmed the final decision of the Patent Trial & Appeal Board in the appealed inter partes review finding the claims to be unpatentable as obvious. The claim term at issue is “sterilant concentration levels” in US6,475,435.  An annotated copy of a figure used by the Court is reproduced below.  This figure shows a sterilization tunnel used for packaging food.  The sterilization tunnel is pressurized to create a flow of sterile air out of the tunnel to prevent contaminants from flowing into the tunnel.  The tunnel is divided into the color-coded zones shown below and each zone has a different purpose (the fourth zone provides bottles, the first zone provides drying, etc.).  The claims are directed toward maintaining “different sterilant concentration levels in the plurality of zones.” In the IPR, the Board construed “sterilant concentration levels” to be levels measured “at any point within the sterilization tunnel – including ‘residual’ concentration on bottle surfaces.”  On… Read More »CAFC Finds Proposed Claim Construction Unsupported by Disclosure