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CAFC Rejects Construction of “Controller” in Patent Claim

In a de novo review of claim construction, the Federal Circuit rejected the District Court’s (ILND) claim construction of the patent claim term “controller” in The Chamberlain Group, Inc. v. Techtronic Industries Co. LTD (Fed. Cir. 2017). The District Court had granted the plaintiff-appellee’s motion for a preliminary injunction.  The Federal Circuit disagreed with the District Court’s claim construction, and thus vacated the preliminary injunction because the preliminary injunction was granted on the basis of incorrect claim construction. The patent at issue, U.S. 7,224,275 is directed toward a garage door opener.  The language at issue from independent claim 1 reads, “a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states.” In addition, claim 2 claims “at least one condition status sensor that is operably coupled to the controller.” The District Court construed the term “controller” to be a “self-aware [controller],…

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PTAB Broadest Reasonable Interpretation: “in response to” Means “subsequent to”

In an ex parte appeal, the PTAB upheld the Examiner’s broadest reasonable interpretation of the patent claim language “in response to” as merely meaning “subsequent to.”  The decision is Ex parte Youngri Kim et al. (PTAB Jan 19, 2017). The subject patent application is drawn toward an ebook reader, and the claim language at issue was the following: providing audio feedback based on a history corresponding to the page, in response to the page turning operation, wherein the history includes at least one of stored user input information and stored music audio playback information. The specification describes that the user may save audio information, e.g., a user’s voice memo, on pages of an ebook.  The specification also describes that the user may turn pages of the ebook by a “page turning operation,” and the audio information is played “in response to the page turning operation.” The claim was finally rejected…

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PTAB Upholds Indefiniteness Rejection of Inferentially Claimed Element

One of the first rules often taught to a young patent attorney, especially for mechanical apparatus claims, is to avoid inferential claiming, i.e., avoid introducing a new element in the middle of a recitation of another element.  This type of drafting can lead to ambiguity about whether this new term is positively recited, and thus part of the claimed invention.  The PTAB reinforced this lesson in Ex parte Joseph L. Sullivan, Appeal 2014-005800 (PTAB June 22, 2016). The claim language at issue is “a defibrillation port for guiding via electrodes the stored external charge to a person.”  The Examiner rejected this language as being indefinite under 35 U.S.C. § 112, second paragraph.  Specifically, the Examiner stated that the phrase “guiding via electrodes” is indefinite because the phrase “is inferentially included and it is unclear if the applicant is positively reciting or functionally reciting the element.”  The Examiner also stated that…

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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, even though the combination did not teach a conditional claim limitation. Ex parte Christopher J. Gibbings; PTAB Appeal 2015/004458 (December 8, 2016). Independent claim 27, at issue, reads: A method for routing data, the method comprising: detecting that a link has failed in a parallel link configuration; determining whether a minimum number of links in the parallel link configuration are operational; if the minimum number of links I the parallel link configuration are operational, advertising actual metrics associated with the operational links; and if the minimum number of links in the parallel link configuration are…

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PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together

In Ex parte Gilbert (Appeal 2012/005795; App. No. 11/200,749), the Patent Trials and Appeals Board (PTAB) held that the Examiner had not established that one of ordinary skill in the art would have had an apparent reason to combine the references because there is nothing that would “tie” the approaches of the references together. The only independent claim at issue reads as follows: 8. (Previously Presented) A method for delivering a drug into tissue comprising the steps of: providing a drug delivery device having at least one nozzle and a drug contained in a portion of the device; identifying a site for delivery of the drug in the eye; placing a portion of the device on or near the site; and delivering the drug as a fine stream into the tissue at the site through the at least one nozzle of the device under needle-free microjet propulsion at a driving…

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