Christopher Francis
Principal author, The Claims Interpreted Report

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

Must Examiners Now Cite the Specification to Support Broadest Reasonable Interpretation?

The Patent Trial & Appeal Board applied In Re: Smith Int’l to limit the broadest reasonable interpretation of claim language in Ex parte David Ben Yair (Appeal 2017-002190, decided Jan. 10, 2018).  In this case, the claim i… Read More

Comments in the Spec that Override Claim Differentiation

In constructing a term in the independent claim in the inter parte review of Kranos Corporation v. Riddell, Inc., (Case IPR2016-01649, Final Written Decision on Feb. 7, 2018),  the Patent Trial & Appeals Board rejected the ap… Read More

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

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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