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Broadest Reasonable Interpretation Has Limits

The United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) recently put the United States Patent Trial and Appeal Board (“the Board”) on notice that the broadest reasonable interpretation of claims (“BRI”) is not without limits. U.S. Patent No. 6,249,876 (“the ‘876 patent”), owned by the Power Integrations, Inc. (“Power Integrations”), had its claims 1, 17, 18 and 19 rejected in an ex parte reexamination that was appealed to the Board. The Board, relying on an interpretation allowing additional elements to be disposed between “coupled” elements, supported the examiner’s rejection of the claims as anticipated under pre-AIA 35 U.S.C. §102(b). The Federal Circuit reversed the Board’s decision, labeling the claim construction as “unreasonably broad.” IN RE: POWER INTEGATIONS, INC. (Appellant), 2017-1304 (March 19, 2018). Claim 1 is set forth below to show its use of “coupled”: A digital frequency jittering circuit for varying the switching frequency of…

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“Substantially” in a Patent Claim is Substantially OK

U.S. Patent No. 5,987,863 (“the ‘863 patent”), owned by the Exmark Manufacturing Company (“Exmark”), recently survived a challenge to its claim 1 as indefinite under 35 U.S.C. §112, ¶2 for inclusion of the phrase “elongated and substantially straight.”  The United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) affirmed a refusal by the United States District Court for the District of Nebraska to grant summary judgment on a motion alleging the invalidity of claim 1 of the ‘863 as indefinite under 35 U.S.C. §112, ¶2.  The motion was made by Briggs & Stratton Power Products Group, LLC’s (“Briggs & Stratton”) in an infringement action initiated by Exmark against Briggs & Stratton.  EXMARK MANUFACTURING COMPANY INC., Exmark Manufacturing Company Inc. (Plaintiff-Appelee) v. Briggs & Stratton Power Products Group, LLC (Defendant-Appellant), 2016-2197 (January 12, 2018). The Federal Circuit looked for evidence that claim 1 “. . . when read…

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Is a fail on §101 always “exceptional” under §285?

The answer to the question posed by the title is no, the Federal Circuit’s recent decision in Inventor Holdings, LLC v. Bed Bath & Beyond Inc., No. 2016-2442 (Fed. Cir. Dec. 8 2017) notwithstanding (reported on by this blog in “Attorney Fees Awarded for Post-Alice Patent Litigation”).  Two recent district court patent cases in which the validity under 35 USC §101 of the asserted patents was in question yielded different results on the award of attorney fees under 35 USC § 285 (Opal Run LLC, Plaintiff v. C & A Marketing, Inc., Defendant, No. 2:16-CV-00024-JRG-RSP (Eastern District of Texas, Marshall Division) (November 29, 2017) (“Opal Run v. C&A”) and Product Association Technologies v. Clique Media Group, No. CV 17-5463-GW (PJWx), (Central District of California) (November 30, 2017) (“PAT v. Clique Media”)).  Both cases slightly predate the Federal Circuit’s Inventor Holdings decision.  In Inventor Holdings, the Federal Circuit cited the Supreme…

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Federal Circuit: No “Teaching Away” Without Discouragement

The University of Maryland Biotechnology Institute (“Maryland”), owner of U.S. Patent No. 6,673,532 B2 (“the ‘532 patent”), recently lost the ‘532 patent when the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) rejected Maryland’s argument that a cited reference is teaching away from combining it with another reference to reach a conclusion of obviousness.  The Federal Circuit affirmed a determination by the PTAB of obviousness of the claims in an interpartes reexamination of the ‘532 patent on 35 U.S.C. §103 grounds.  The reexamination was requested by Presens Precision Sensing GMBH (“Presens”), a seller of equipment that uses technology related to that in the ‘532 patent.   University of Maryland Biotechnology Institute v. Presens Precision Sensing GMBH, 2016-2745, 2017-1057 (November 3, 2017). The claim rejections relied on two technical papers, Bernhard H. Weigl et al., Optical Triple Sensor for Measuring pH, Oxygen and Carbon Dioxide, 32 J. Biotechnology…

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PTAB: Filled May Be Indefinite, Unfilled Is Adequately Described

Tinnus Enterprises, LLC (“Tinnus”), owner of U.S. Patent No. 9,527,612 B2 (“the ‘612 patent”) recently suffered a setback when the U.S. Patent Trial and Appeal Board ordered institution of a post-grant review of the ‘612 patent on the ground of indefiniteness.   Responsive to a petition by Telebrands Corp. (“Telebrands”) for a post-grant review of the ‘612 patent on 35 U.S.C. §103 and 35 U.S.C. §112(a) and §112(b) grounds, the PTAB granted review of claim 3 for a determination of whether a “filled state”, as used in claim 3, is indefinite.  Interestingly, Telebrands’ request for review of the adequacy of the written description’s support of claim 3’s “unfilled state” was not granted, with the PTAB deciding it was adequately described.   Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2017-00015 (October 11, 2017).   35 U.S.C. §103 The PTAB firmly rejected the proposed §103 grounds, noting that all of the references asserted in the…

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