Christopher Francis
Principal author, The Claims Interpreted Report

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

The Federal Circuit on Claim Construction and Indefiniteness

In the recent case Intellectual Ventures I LLC v. T-Mobile USA, Inc., the Federal Circuit overturned a district court’s claim construction for reading in a limitation and upheld the district court’s invalidation for indefinite… Read More

Ex Parte Jung De-Designated as Informative by PTAB

A previous post discussed Ex parte Jung, which was designated as Informative by the PTAB on July 10, 2018.  In a bulletin posted on August 7, 2018, the PTAB states that: It has come to PTAB’s attention that the decision has… Read More

“At Least One of” Ex Parte Opinion Designated as Informative by PTAB

The PTAB interpreted claim language in the form of “at least one of A and B” to mean at least one of A and at least one of B in Ex parte Dong-Shin Jung et al. (Appeal No. 2016/008290, designated Informative on July 10, 2018).… Read More

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construction of “a” to mean “one or more,” and instead limited “a” to mean “one single, continuous member” in the nonprecedential opinion for Wonderland Nurser… Read More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

Upcoming Webinar

We are delighted to kick off the first B2 IP Webinar of 2019 with David Hannon, Of Counsel at Bejin Bieneman, who will provide an outline of issues for decision by a US brand owner in its pursuit of trademark protection in China. Mr. Hannon will dis…Register

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