“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

Broad Claim Term Dooms Patent at PTAB

Last month, the Patent Trial and Appeal Board issued a final written decision in Bright House Networks v. Focal IP (IPR2016-01263), finding the telecommunications patent in question obvious based on a broad claim construction of … 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 In Rembrandt Patent Innovations LLC v. Apple Inc., No. 2016-2324  (Nov. 22, 2017) (non-precedential)… Read More

‘Internet protocol’ different than ‘internet protocol’

Court of Appeals for the Federal Circuit affirms obviousness rejection of Patent Trial and Appeal Board based on the Board’s construction of ‘Internet protocol’ and ‘internet protocol.’ AIP Acquisitions LLC v. Cisco Syst… Read More

Written Description Inapplicable to Doctrine of Equivalents

The written description requirement does not extend to equivalents asserted under the doctrine of equivalents, according to a recent order in the District of Delaware. The district judge in Sprint v. Cox resolved dueling summary… Read More

Federal Circuit: No “Teaching Away” Without Discouragement

The University of Maryland Biotechnology Institute (“Maryland”), owner of U.S. Patent No. 6,673,532 B2 (“the ‘532 patent”), recently lost the ‘532 patent when the United States Court of Appeals for the Federal Circ… Read More

Differing Claim Terms Construed with Same Definition

Can a court construe two different terms in two different claims the same way? If the specification uses those phrases in the same way, then yes. In Pavo Solutions, LLC v. Kingston Technology Company, Inc., Nos. 2016-2209, 2016-23… Read More

CAFC Affirms PTAB Claim Construction of “Connected”

In Ignite USA, LLC. V. Camelback Products, LLC., No. 2016-2747 (Fed. Cir. Oct. 12, 2017), the Federal Circuit upheld the PTAB’s inter parte review claim construction that the claim term “connected” does not require a permane… Read More

PTAB: Filled May Be Indefinite, Unfilled Is Adequately Described

Tinnus Enterprises, LLC (“Tinnus”), owner of U.S. Patent No. 9,527,612 B2 (“the ‘612 patent”) recently suffered a setback when the U.S. Patent Trial and Appeal Board ordered institution of a post-grant review of the… Read More

Patent Claim Preamble Not Limiting, Infringement Not Derailed

Here is a case illustrating the general rule that the preamble of a patent claim is rarely construed as a substantive claim limitation. In Georgetown Rail Equipment Co. v. Holland L.P.¸ No. 2016-2297 (Fed. Cir. Aug. 1, 2017), the… Read More

Upcoming Webinar

Thomas Bejin of Bejin Bieneman PLC will discuss best practices for Ex Parte Patent Appeals.  Ex Parte Patent Appeals can be an effective tool to advance prosecution.  The webinar will begin with an overview of the Ex Parte Appeal process, including…Register

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