Rule Change for PTAB Post-Grant Claim Construction

AIA BRI CBM IPR patent PGR Phillips PTAB

On October 11, 2018, the USPTO published in the Federal Register a rule change, 83 F.R. 51340, to take effect today, November 13, 2018.  For all AIA post-grant petitions (IPRs, PGRs, and CBMs) filed on or after this date, the broadest reasonable interpretation (BRI) standard will no longer be used in claim construction for these …

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Fed Circuit Watch: PTAB Error to Not Consider Arguments in Reply Brief

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On August 27, 2018, the Court of Appeals for the Federal Circuit handed down Ericsson Inc. v. Intellectual Ventures I LLC,[1] in which the rules played an important role in decisions made in the case. The facts are as follows. Intellectual Ventures I owns U.S. Patent No. 5,602,831 (‘831), entitled “Optimizing packet size to eliminate …

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Fed Circuit Watch: Enabling Scope of Design Patent Claims Expands – Greatly

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In a potentially ground-breaking decision in design patent prosecution, the Court of Appeals for the Federal Circuit handed down In re Maatita,[1] on August 20, 2018. The facts are as follows.  Ron Maatita filed a design patent application with the USPTO, Serial No. 29/404,677, claiming an athletic shoe sole design. As with all design patent …

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Fed Circuit Watch: Dropped Priority Claim Invalidates Patent

112 fed circuit watch patent priority Written Description

On April 19, 2018, the Court of Appeals for the Federal Circuit handed down Droplets, Inc. v. E*Trade Bank,[1] in a case dealing with the formal issue of preparing a proper claim of priority in the specification.  The absence of one will cause major problems downstream, as it did for Droplets, Inc. The facts are …

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Fed Circuit Watch: Plain Claim Language Not Narrowed Unless Patentee Explicitly Disclaims Scope

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An interesting study in organic chemistry appeared at the Federal Circuit.  On April 16, 2018, a Fed Circuit panel in Sumitomo Dainippon Pharma Co., Ltd. v. Emcure Pharm. Ltd.,[1] held that plain claim language will be construed narrowly absent the patentee’s clear disclaimer limiting its scope. First a primer on stereochemistry, which is the study …

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Fed Circuit Watch: Unreasonably Broad PTAB Claim Construction Reversed

102 BRI fed circuit watch patent

On March 19, 2018, the Court of Appeals for the Federal Circuit rejected, in In re Power Integrations, Inc.,[1] a PTAB decision finding that claims were invalidated as anticipated as unreasonably overbroad.  The claim construction was subject in an ex parte reexamination of Power Integrations’ U.S. Patent No. 6,249,876 (‘876).  ‘876 is directed to “Frequency …

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Fed Circuit Watch: Written Description From Earlier-Filed PCT with Species Claim Sufficient Support for Later-Filed Genus Claim

102 112 fed circuit watch patent PCT pre-AIA priority Written Description

On March 14, 2018, the Court of Appeals for the Federal Circuit ruled on Hologic, Inc. v. Smith & Nephew, Inc.,[1] which deals with many areas in patents, including foreign applications, priority claims, 35 U.S.C. §103, 35 U.S.C. §112, and pre-AIA treatment for examination.  This case was heard before a panel composing of Judges Newman, …

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Fed Circuit Watch: Well-Prepared Lexicography Dooms Claim Term as Obvious

103 BRI fed circuit watch IPR lexicography patent

This, unfortunately, was a bad week for Steuben Foods, Inc., since this is the second case it lost at the Federal Circuit against the same adversary, Nestlé Foods.  This time, in Nestle USA, Inc. v. Steuben Foods, Inc.,[1] the Court of Appeals for the Federal Circuit, on March 13, 2018, ruled that Steuben Foods could …

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Fed Circuit Watch: PTAB Not Bound by Fed Circuit Precedent

102 112 collateral estoppel fed circuit watch patent Written Description

On March 1, 2018, in a fairly convoluted and highly fractured decision, the Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) was not bound to collateral estoppel principles which form a long line of Fed Circuit case precedence.  That case is Knowles Elecs. LLC v. Cirrus Logic, …

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Fed Circuit Watch: Another §101 Decision, Different Rationale, May Signal Future Changes to Patent-Eligibility Analysis

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As of February 14, 2018, at last count, there have been six substantive opinions rendered by the Court of Appeals for the Federal Circuit relating to 35 U.S.C. §101, creating an unusually large body of §101 jurisprudence within only six weeks of the calendar year.  Two of these opinions, Move, Inc. v. RE/MAX Int’l, Inc., …

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