Christopher Francis
Principal author, The Claims Interpreted Report

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 T… Read More

Plain and Ordinary Meaning Requires More Than a Mere Capability

The Eastern District of Texas has granted-in-part Defendant HTC’s motion to strike expert testimony based on application of improper legal principles, to wit, the expert had improperly extended the plain and ordinary meaning of… Read More

“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construction of “a” to mean “one or more,” and instead limited “a” to mean “one single, continuous member” in the nonprecedential opinion for Wonderland Nurser… Read More

Prosecution History Crucial for Claim Interpretation of “Remote”

The Federal Circuit has again highlighted the importance of prosecution history for patent claim interpretation. In Baker v. Microsoft Corp., No. 2017-2357 (Fed. Cir. Apr. 9, 2018) the Federal Circuit upheld a district court claim… Read More

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 th… Read More

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… Read More

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 eleme… Read More

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 embodi… Read More

PTAB Claim Construction Results in Insufficient Evidence to Support Institution

In its Decision to grant institution of inter partes review in Apple Inc. v. Valencell, Inc. (IPR2017-01947, Decision dated Feb. 26, 2018), the PTAB construed the term “adjacent” to have a different meaning than that proposed… Read More

Obviousness Update in January 2018 MPEP Revision

An updated version of the Manual of Patent Examining Procedure (MPEP) was published in January 2018 and does make one noteworthy change regarding MPEP §2143.01V titled “The Proposed Modification Cannot Change the Principle of O… Read More

Upcoming Webinar

The Supreme Court recently issued decisions in Oil States v. Greene’s Energyand SAS Institute v. Iancuaffecting inter partes review before the Patent and Trademark Office. During the July webinar, Bryan Hart of Bejin Bieneman will discuss how thes…Register

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