Christopher Francis
Principal author, The Claims Interpreted Report

Lack of Antecedent Basis Renders Claim Indefinite, but Subjective Claim Terms Found Not Indefinite Under § 112

During a Markman hearing, the Eastern District of Texas ruled claim 12 of U.S. Patent No. 7,865,920 invalid for indefiniteness under 35 U.S.C. § 112 because “[t]here is no antecedent reference to ‘storage locations’ or ‘i… Read More

Anticipation of Software Patent Claims: Arguments Must Be Consistent with Court’s Claim Construction

In a decision instructive on patent claim interpretation and anticipation analysis in software cases, claims directed to “computerized fitness equipment” that “simulates… actual race conditions with other users” were hel… Read More

CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

The Federal Circuit affirmed a decision by the PTAB finding that the claims of U.S. Patent No. 7,529,806 are “obvious over [the prior art] in light of the general knowledge of a skilled artisan.” Koninklijke Philips N.V. v. Go… Read More

Claims Combing a System and a Method for Using the System are Invalid for Indefiniteness Under § 112

During a Markman patent claim construction proceeding, the Western District of Texas ruled multiple claims of U.S. Patent No. 7,284,203 invalid for indefiniteness under 35 U.S.C. § 112 because the claims “improperly combine sys… Read More

Federal Circuit Upholds Noninfringement Because of Claim Construction of “Extruded Parison”: Plastic Omnium v. Donghee America

The Federal Circuit recently upheld a summary judgment of noninfringement based on an undisputed claim construction in Plastic Omnium v. Donghee America. The dispute centered on manufacturing plastic fuel tanks by blow molding. Pl… Read More

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