Christopher Francis
Principal author, The Claims Interpreted Report

CAFC: “Reciprocate” and “Translate” are not Distinct Motions

In Smith & Nephew, Covidien v. Hologic, (Fed. Cir., 2018) the CAFC interpreted the claim phrase “simultaneously rotate, translate, and reciprocate” such that reciprocating includes a translating motion, but is not necessar… Read More

CAFC: “Injection Molded” is not Product-by-Process

In In Re: Nordt Development Co., the CAFC vacated the Board’s finding that the claim term “injection molded” was a product-by-process limitation that was not afforded patentable weight.  Claim 1 includes many instances of … Read More

“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 … Read More

Fed. Cir.: Statements in Specification Limit Patent Claims

A recent case from the Federal Circuit demonstrates the perils of pointing out problems in prior art in a patent specification. In Rembrandt Patent Innovations LLC v. Apple Inc., No. 2016-2324  (Nov. 22, 2017) (non-precedential)… Read More

‘Internet protocol’ different than ‘internet protocol’

Court of Appeals for the Federal Circuit affirms obviousness rejection of Patent Trial and Appeal Board based on the Board’s construction of ‘Internet protocol’ and ‘internet protocol.’ AIP Acquisitions LLC v. Cisco Syst… Read More

Patent Claims to Selecting Ads for Display Denied Covered Business Method Review

The USPTO’s Patent and Trial Appeal Board has declined to institute a Covered Business Method review of two patents with claims to “directing electronic advertisements” based on user profile attributes with the goal of maxim… Read More

Functional Language Found Definite by CAFC

In BASF Corporation v. Johnson Matthey (decided Nov. 20, 2017), the Court of Appeals for the Federal Circuit held that a “composition…effective to catalyze” is definite under the standard set forth in Nautilus v. Biosig.  A… Read More

Written Description Inapplicable to Doctrine of Equivalents

The written description requirement does not extend to equivalents asserted under the doctrine of equivalents, according to a recent order in the District of Delaware. The district judge in Sprint v. Cox resolved dueling summary… Read More

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 Circ… Read More

Differing Claim Terms Construed with Same Definition

Can a court construe two different terms in two different claims the same way? If the specification uses those phrases in the same way, then yes. In Pavo Solutions, LLC v. Kingston Technology Company, Inc., Nos. 2016-2209, 2016-23… Read More

Upcoming Webinar

Thomas Bejin of Bejin Bieneman PLC will discuss best practices for Ex Parte Patent Appeals.  Ex Parte Patent Appeals can be an effective tool to advance prosecution.  The webinar will begin with an overview of the Ex Parte Appeal process, including…Register

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