Christopher Francis
Principal author, The Claims Interpreted Report

Court Overturns § 102 Rejection Due to Limiting Preamble

The Federal Circuit overturned a PTAB decision affirming anticipation rejections under 35 U.S.C. § 102 of patent claims directed to “the construction of travel trailers” because the the PTAB “erred in concluding [the preamb… Read More

112 and the Zone of Uncertainty

In consolidated cases Niazi Licensing Corp. v. Boston Scientific Corp. and Niazi Licensing Corp. v. St. Jude Medical S.C. Inc. the district court found U.S. Patent 6,638,268 (“the ‘268 patent”) to be invalid under 35 U.S.C.… Read More

“Circuit For” Interpreted as Means-Plus-Function

Even without the word “means,” claims can be interpreted as means-plus-function, as demonstrated by the Central District of California in a decision in Limestone Memory Systems v. Micron Technologies. The court interpreted the… Read More

Markman Ruling Finds Preamble Limiting, Claim Term Indefinite

The Southern District of Texas issued an interesting Markman ruling in ConocoPhillips v. In-Depth Geophysical. While the court construed most of the claim terms in ConocoPhillips’s favor, In-Depth managed to secure rulings that… Read More

Conditional Dependent Claim Lacking Mutual Exclusivity is Indefinite

The Central District of California recently held a dependent patent claim indefinite for failing to “specify a further limitation of the subject matter claimed” under 35 U.S.C. § 112. BlackBerry Limited v. Facebook, Inc. et a… Read More

Secret Sales Are Still Prior Art under the On-Sale Bar

In a short, unanimous opinion, the Supreme Court held that “secret sales” count as prior art under the on-sale bar. The Court, in the anticipated case Helsinn Healthcare v. Teva Pharmaceuticals, found that Helsinn’s agreemen… Read More

Single Reference Obviousness Rejection Requires No Motivation

Does an obviousness rejection under 35 U.S.C. § 103 in which a single reference discloses each element require a motivation to combine with another reference? In Realtime Data, LLC v. Iancu, the Federal Circuit said no, upholding… Read More

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… Read More

“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 specif… Read More

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 th… Read More