IP Blog
broadest reasonable interpretation
When an Examiner Can Use a Dictionary: Guidance from In Re Smith International
In In Re Smith International, the Federal Circuit stated that the broadest reasonable interpretation of a claim term must be consistent with the specification, as discussed in a previous post. So does that have any effect on the Examiner’s ability to use extrinsic evidence, such as a dictionary definition, to interpret a claim term? The two ex parte PTAB appeals discussed below...
Coffin Patent Lives on after IPR
The Federal Circuit agreed with the Patent Trial & Appeal Board that the claim language “form a casket body” was a structural limitation, not an intended use, and affirmed the final written decision of PTAB finding that the inter parte review petitioner failed to demonstrate that the claims were unpatentable. Matthews International Corp. v. Vandor Corp. (Fed. Cir., decided March...
Broadest Reasonable Interpretation Has Limits
The United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) recently put the United States Patent Trial and Appeal Board (“the Board”) on notice that the broadest reasonable interpretation of claims (“BRI”) is not without limits. U.S. Patent No. 6,249,876 (“the ‘876 patent”), owned by the Power Integrations, Inc. (“Power Integrations”), had its claims 1, 17, 18...
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 is directed toward a composite suit including “an inner suit” and “an outer suit,” and the prior art discloses a single article of...
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 necessarily a distinct motion. The CAFC based this interpretation on both the plain and ordinary meaning of the terms “translate” and “reciprocate” and also on the text of the...
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 “injection molded.” One example, is “a hinge mechanism comprising an injection molded component and injection molded first and second arm components.” The specification includes two paragraphs...
Improper Broadest Reasonable Interpretation Led to Finding of Nonobviousness
In Owens Corning v. Fast Felt Corporation (decided October 11, 2017), the Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board’s finding that obviousness was not proven in an inter parte review was founded on an improper interpretation of a claim element. The CAFC interpreted the claim element more broadly and concluded that the claim was obvious when...
CAFC Requires Broadest Reasonable Interpretation to Correspond to Inventor’s Description in Spec
In In Re: Smith International, Inc., the CAFC held that the broadest reasonable interpretation of a claim term must correspond with what and how the inventor describes the invention in the specification. In this case, the CAFC held that the interpretation of the claim term “body” by the Examiner and the PTAB in the underlying ex parte reexamination may not...
CAFC Rejects PTAB’s Interpretation of “Lateral, Trans-Psoas Path” in IPR
In In Re: Nuvasive, Inc., the CAFC vacated the PTAB’s Final Decision in an IPR because the PTAB misconstrued the broadest reasonable interpretation of the claim term “lateral, trans-psoas path.” By way of background, the patent at issue, US 8,016,767, was drawn toward surgical methods for inserting a spinal fusion implant. During such surgeries, it was known to approach the...
CAFC Vacates PTAB Decision Based on Claim Interpretation of "Aseptic"
The Federal Circuit, in Nestle USA v. Steuben Foods, vacated a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) for an unreasonably broad interpretation of the term “aseptic.” Notably, where the patent refers to “FDA level of aseptic” for aseptic packaging, the proper interpretation should be focused on FDA regulations specifically on aseptic...