Tag Archives: Claim Construction

Petitioners’ Replies May Respond to Newly Raised Claim Constructions

By Jim Warriner on Posted in Appeals, Claim Construction, Inter Partes Review, IPR
Can a petitioner’s reply in an IPR proceeding present new arguments and evidence responding to a proposed claim construction first raised in the patent owner’s response?  In Axonics, Inc. v. Medtronic, Inc., Nos. 2022-1532, 2022-1533 (Fed. Cir. Aug. 7, 2023), the Federal Circuit answered in the affirmative, vacating the PTAB’s final written decision of no … Continue Reading

Mine Your Patent Application and You Might Find a Licensee

By Sandip H. Patel on Posted in Appeals, Claim Construction, Interferences, Section 112
A patent interference is an adversarial proceeding where each party is trying deprive its opponent of a patent on an invention that that the Patent Office has already decided is patentable. Long after the AIA became effective to phase out interferences, the Patent Trial and Appeal Board continues to declare and administer them where at … Continue Reading

Federal Circuit Provides some Clarity as to when a Claim Preamble is Limiting

By William (Bill) J. Samore on Posted in Claim Construction, Sections 102/103
In Shoes by Firebug LLC, v. Stride Rite Children’s Group, LLC, Appeals 2019-1622, and 2019-1623 (Fed. Cir. June 25, 2020), the Federal Circuit affirmed the PTAB’s IPR decisions that the claims of two challenged Firebug patents, directed to illumination systems for footwear, were unpatentable for obviousness. Although the PTAB erred in determining that the word … Continue Reading

So Long, and Thanks for All the Fish

By Noah K. Tilton on Posted in Section 101
In a recent precedential decision, the Federal Circuit affirmed a Patent Trial and Appeal Board decision, upholding an examiner’s final rejection of claims to a fishing method as unpatentable under 35 U.S.C. § 101.  In re Rudy, Case 2019-2301, Slip Op. (Fed. Cir. Apr. 24, 2020).  Appeals to both the Board and the Federal Circuit … Continue Reading

Patent Invalidated Despite Owner’s Argument Reinstated On Appeal

By John J. Lucas on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
In The Chamberlain Group, Inc. v. One World Techs., Inc., Case 18-2112 (Fed. Cir. Dec. 17, 2019), the Federal Circuit held the USPTO erred in determining that Chamberlain raised a new argument during the Board’s final hearing. There, Chamberlain argued that the prior art did not anticipate certain claims of the patent. The Federal Circuit … Continue Reading

Come on, Board, Finish What You Started

By Sandip H. Patel on Posted in Claim Construction, Inter Partes Review, IPR, Section 112, Sections 102/103
The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeals 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020), is remarkable, but not for its holding: “the Board may not cancel claims for indefiniteness in an IPR proceeding.” After 10,000 IPRs, hardly anyone thought otherwise. But it’s interesting nonetheless that someone so … Continue Reading

Federal Circuit Rejects Presumption of Nexus Between Claimed Invention and Evidence of Secondary Factors

By Thomas L. Duston on Posted in Inter Partes Review, IPR
In FOX Factory, Inc. v. SRAM, LLC, Case Nos. 2018-2024, 2018-2025 (Fed. Cir. December 18, 2019), the Federal Circuit determined that the Board erroneously presumed a nexus between evidence of secondary considerations and the challenged independent claims.  Petitioner FOX appealed the decisions of the Board in two inter partes reviews.… Continue Reading

PTAB Revises Trial Practice Guide To Reflect Recent Decisions On Claim Construction, Petition and Motion Practice

By Raymond R. Ricordati, III on Posted in Amendments, Claim Construction, Discovery, Institution / Denial, Trial Procedures
The Patent Trial and Appeal Board (PTAB) recently published a second update to its Trial Practice Guide (TPG). The TPG, initially released in 2012, was first updated in August 2018 (see here). This second update further revises and/or adds guidance relating to certain general procedures and many aspects of trial practice before the PTAB.… Continue Reading

FC Affirms Obviousness Decision by Board Trigger of Time Bar

By Kate Nuehring Su on Posted in Appeals, Claim Construction, Inter Partes Review, Sections 102/103
In Hamilton Beach Brands, Inc. v. F’real Foods, LLC, Appeal No. IPR2016-01107 (Fed. Cir. Nov. 16, 2018), the Federal Circuit affirmed the Patent Trial and Appeal Board’s final written decision in an IPR upholding the patentability of a patent claim under 35 U.S.C. § 103. Additionally, the court discussed but did not determine whether improper … Continue Reading

Federal Circuit Puts Nail in Coffin For Petitioner’s Case Challenging Casket Patent

By Marshall Gerstein on Posted in Claim Construction, Inter Partes Review, Sections 102/103
In Matthews International Corporation v. Vandor Corporation, No. 2017-1889 (Fed. Cir. Mar. 27, 2018) (non-precedential), the Federal Circuit affirmed the PTAB’s final written decision to uphold the claims of Vandor’s patent that Matthews challenged in inter partes review. The claims at issue “are directed to ‘a casket arrangement’ made of pliable material, such as cardboard,” … Continue Reading

Federal Circuit Reverses, i.e. Overturns, Board’s Anticipation Decision Due to Overbroad Claim Construction

By Kate Nuehring Su on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In TF3 Ltd. v. Tre Milano, LLC, Appeal 2016-2285 (Fed. Cir. July 13, 2018), the Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision canceling claims directed to a hair styling device as anticipated by prior art.  The court concluded that the Board improperly broadened two claim terms beyond the description in … Continue Reading

Mixed Result Upheld in Personal Audio IPRs

By Marshall Gerstein on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
The Federal Circuit upheld the PTAB’s mixed decisions in IPRs filed by Google to challenge claims of two Personal Audio LLC patents asserted against Apple, Samsung, Amazon and Research in Motion, in addition to Google. Google LLC v. Personal Audio LLC, Nos. 2017-1162, -1166, -2110, -2111 (Fed. Cir. Aug. 1, 2018) (non-precedential).… Continue Reading

Play the Claim

thumbnail image of DNA strandBy Sandip H. Patel on Posted in Biotechnology, Claim Construction, Ex Parte, Reexamination, Sections 102/103
Monsanto Technology LLC v. E.I. DuPont de Nemours & Co. Appeal 2017-1032 (Fed. Cir. Jan. 5, 2018), illustrates “[t]he life of a patent solicitor has always been a hard one.” [1] The case concerns an inter partes reexamination of a Monsanto patent in which the Patent Office concluded the claimed subject matter was inherently described in an … Continue Reading

Collateral Estoppel Not Limited to Identical Claims

By Tiffany D. Gehrke on Posted in Appeals
The equitable doctrine of collateral estoppel protects a party from having to re-litigate an issue that has already been fully and fairly adjudicated. In Nestlé USA, Inc. v. Steuben Foods, Inc. the Federal Circuit said that application of collateral estoppel is not limited to construing only identical patent claims; but instead, it extends to terms … Continue Reading

Is the PTAB Bound by a Prior Federal Circuit Claim Construction?

By Michael R. Weiner on Posted in Inter Partes Review, IPR, Trial Procedures
In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB decision that upheld an examiner’s rejection of claims for anticipation in an inter partes reexamination (IPX). The same claims had earlier been challenged, and determined to be not invalid (over different prior art), in … Continue Reading

Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable

By Ryan J. Schermerhorn on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
Last fall, the Federal Circuit reversed a PTAB decision that affirmed an Examiner’s rejection of various claims in an ex parte reexamination because the Examiner’s interpretation of the claims, which the PTAB upheld, was unreasonably broad. In re Smith International, Inc., Appeal No. 2016-2303 (Fed. Cir. Sept. 26, 2017). The court’s decision is noteworthy because … Continue Reading

Error in Claim Construction Leads to Reversal of IPR Decision and Cancelation of Claims

By Michael R. Weiner on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
Two recent Federal Circuit decisions illustrate how an error in construing claims may lead the court to reverse a PTAB final written decision. In Organik Kimya AS v. Rohm & Haas Co., the Federal Circuit determined that the PTAB correctly construed the disputed claim term, “swelling agent,” and therefore affirmed the PTAB’s decisions upholding the … Continue Reading

Federal Circuit Overturns PTAB’s Finding of Patent Validity

By Matthew R. Carey on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
In a split opinion in Homeland Housewares, LLC v. Whirlpool Corporation, the Federal Circuit has again overturned a final written decision issued by the PTAB determining that challenged claims in an IPR were not unpatentable, a development that should at least cast doubt on the validity of patents that survive challenges at the PTAB. Homeland … Continue Reading

PTAB Correctly Construed “Said” and Canceled Claims—but Was the Patent CBM Eligible?

By Michael R. Weiner on Posted in Section 112
In a CBM appeal, TransPerfect Global, Inc. v. Matal, No. 2016-1121 (Fed. Cir. July 12, 2017) (non-prec.), the Federal Circuit determined that the PTAB correctly construed the word “said” in the claim term “said hyperlink,” and determined that TransPerfect’s challenged claims were unpatentable for lack of written description. The court’s claim construction analysis is thorough … Continue Reading

Attorney Argument Doesn’t Provide Substantial Evidence To Support PTAB

By Kate Nuehring Su on Posted in Inter Partes Review, IPR, Sections 102/103
In Google Inc. v. Intellectual Ventures II LLC, Appeal 2016-1543, 2016-1545 (Fed. Cir. July 10, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling some claims of U.S. Patent No. 6,121,960, but vacated the portion of the decision that refused to cancel other claims.  With respect to the upheld claims, the court remanded … Continue Reading

Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other

By Ryan J. Schermerhorn on Posted in Appeals, Claim Construction, Inter Partes Review, Sections 102/103
In Wasica Finance GmbH v. Continental Automotive Sys., Inc., (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed-in-part and reversed-in-part two PTAB final written decisions cancelling some but not all challenged claims  of U.S. Patent No. 5,602,524 (“the ‘524 patent”). The PTAB and court decisions are interesting because together they highlight the consequence of not … Continue Reading

Failing to Articulate Desired Claim Construction Before PTAB May Lead to Waiver

By Matthew R. Carey on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
In the latest development in the ongoing patent battle between Google and SimpleAir Inc., a Federal Circuit panel agreed with SimpleAir that Google waived a claim construction it asserted on appeal because Google had failed to argue that construction before the PTAB. SimpleAir originally asserted a series of patents against Google, including U.S. Patent No. … Continue Reading

Pending Bill Would Deliver More Judicial Scrutiny to USPTO and FDA Rules

By Michael Muczynski on Posted in Claim Construction, Institution / Denial, Inter Partes Review, Legislation, Post Grant Review
 The House of Representatives recently sent to the Senate its bill (H.R.5) that combines six previous regulatory reform bills, including, as Title II of the bill, the “Separation of Powers Restoration Act.”  Section 202 of the bill effectively removes the option for courts to apply Chevron deference to agency rulemaking and interpretations.  Thus, rather than deciding … Continue Reading
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