Christopher Francis
Principal author, The Claims Interpreted Report

Does Claim Construction Matter in Determining Patent-Eligibility under 35 U.S.C. § 101?

Patent applicants and owners should position claims for narrow constructions where subject matter is susceptible to challenge under 35 U.S.C. § 101, suggests a recent decision from the USPTO’s Patent Trial and Appeal Board (PTA… Read More

Federal Circuit Reverses PTAB Claim Construction as Unreasonably Broad

The Federal Circuit recently clarified that the “broadest reasonable interpretation” of claims construed in an inter partes review (“IPR”) must still be “reasonable.” In PPC Broadband, Inc. v. Corning Optical Communica… Read More

PTAB Reverses Rejection Because Patent Examiner Applied a “Broader Than Reasonable Interpretation”

Patent examiners often rely on claim interpretations that seem ridiculous to applicants. Here is a case showing that applicants should push back in such situations when claims are rejected under a “broadest reasonable interpreta… Read More

Different Patent Claim Terms Can Have Same Meaning

Courts will presume different meanings attach to different words when construing claim language. See, e.g., Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (reversing lower court’s ruling t… Read More

Learning from a Finding of Indefiniteness at the Patent Trial and Appeal Board

A recent decision from the Patent Trial and Appeal Board (PTAB) provides a lesson in avoiding indefiniteness under 35 U.S.C. § 112(b). In In re Hyde, Appeal 2013-003305, Application 12/387,151 (PTAB Nov. 4, 2015), the Applicant a… Read More

Broadest Reasonable Interpretation Has Limits

Every patent practitioner has felt the frustration that the USPTO’s “broadest reasonable interpretation” standard for claim construction seems to mean that claims say whatever the Patent Office wants them to mean. However, t… Read More

PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together

In Ex parte Gilbert (Appeal 2012/005795; App. No. 11/200,749), the Patent Trials and Appeals Board (PTAB) held that the Examiner had not established that one of ordinary skill in the art would have had an apparent reason to combin… Read More

Federal Circuit Reverses Software System Patent Claim Construction

In an opinion authored by Chief Judge Rader, and joined by Judges Dyk and Taranto, the Federal Circuit has reversed and vacated a summary judgment of non-infringement in favor of Google, finding that the district court based its f… Read More

Common Meaning Given to Claim Language Using Terms of Art

A question of infringement turned on the meaning of “gateway” in the phrase “intelligent gateway” in a patent claim.  The Federal Circuit agreed that a district court was entitled to consult technical dictionaries and use… Read More

Upcoming Webinar

Preparing and Prosecuting Functional Claims
October 23, 2019 at 12:00 pm EDT
There continues to be a dramatic impact on the interpretation of functional claim terms after the Federal Circuit decision in Williamson v. Citrix Online L.L.C. Since means-plus-function claiming can be utilized in almost every field of innovation, p…Register

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