Christopher Francis
Principal author, The Claims Interpreted Report

Markman Construction of “Along” based on the Specification

In Stern v. Globus Medical in the District of Delaware (Civil Action No. 1:16-cv-91-RGA), theMarkman construction of the claim term “along a longitudinal axis” was “on line or course parallel or close to,” i.e., not neces… Read More

PTAB Construes Claim Term Based on Explicit Definition in Specification

In AVX Corporation v. Presidio Components (IPR2016-00636), the PTAB construed the term “essentially monolithic” based on the explicit definition provided in the detailed description of the challenged patent, US6,661,639.  The… Read More

“Molded” Construed as Product-by-Process in IPR

In the Final Written Decision in L&P Property Management Company v. National Products Inc., the PTAB construed the terms “molded docking station,” “molded wall,” and “molded apparatus body” as product-by-process li… Read More

Unpredictability, not Inherency, Important for Obviousness

In Honeywell International Inc. v. Mexichem Amanco Holding S.A. De C.V., No. 2016-1996, 2017 U.S. App. LEXIS 13909 (Fed. Cir. Aug. 1, 2017), the Federal Circuit vacated and remanded a PTAB decision, holding that an obviousness rej… Read More

Federal Circuit: District Court Should Have Construed Claims

The Federal Circuit in Nobelbiz v. Global Connect recently reversed a district court for relying on the “plain and ordinary meaning” of claim terms rather than offering construction because the parties disputed the scope of th… Read More

District Court Construction of “High Quality of Service Connection”

Iridescent Networks, Inc. v. AT&T Mobility, LLC (6:16-CF-01003-RWS, EDTX, Memorandum Opinion and Order dated July 18, 2017) provides an example of prosecution history that limits the construction of the claims.  In an interes… Read More

Eastern District of Texas Clarifies Distinction Between Claim Interpretation and Factual Findings

The Court in Dynocom Industries v. Mainline Automotive Equipment (Docket CV 00553-JRG-RSP, EDTX, Memorandum Opinion and Order dated July 15, 2017) found that a proper claim construction of “co-axially rotate” is “rotate on a… Read More

Lack of Written Description Support Leads CAFC to Invalidate

In TransPerfect Global, Inc. v. Joseph Matal, the CAFC affirmed the Board’s PGR rejection of the claims of US6,857,022 as invalid for lack of written description support.  The ‘022 patent discloses a method of obtaining a tra… Read More

CAFC: PTAB Claim Construction Violates Boundaries of BRI

In IPCom GMBG & Co. v. HTC Corp. (Fed Cir. 2017), the Federal Circuit vacated and remanded a finding of obviousness in an Inter Partes Reexamination because the PTAB’s claim construction went beyond the broadest reasonable i… Read More

Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

The PTAB held that the claims in Ex parte Quimby, Appeal No. 2016-004681 (June 2, 2017) were directed toward unpatentable subject matter.  Of particular interest given the claim language, the Appellant was unsuccessful with argum… Read More

Upcoming Webinar

Business Methods and Patent-Eligibility at the USPTO
September 22, 2017 at 12:00 pm EDT
During the webinar, Charles Bieneman will discuss recent trends and current practices with respect to patent-eligibility at the USPTO’s business methods arts units – including a looks at how some cases are surviving Section 101 rejections. Register