IP Blog
claim interpretation
Fed. Cir. Claim Construction Focuses on Meaning of “A”
In Apple v Corephotonics, the Federal Circuit vacated and remanded a final decision of the PTAB holding that Apple failed to show that challenged claims of U.S. Patent No. 10,225,479 were obvious. Curiously, the Federal Circuit relied on patentee’s use of “a” when conducting claim interpretation of “a point of view (POV) of the Wide camera.” The ‘479 patent is...
Prosecution Disclaimer Pitfalls
In Speedtrack, Inc. v. Amazon.com, Inc. (June 3, 2021), the Federal Circuit affirmed not only the district court’s findings relating to patent infringement, but also the importance of prosecution history when interpreting the claims. More specifically, the Federal Circuit affirmed a finding that Amazon.com et al. (“Amazon”) did not infringe U.S. Patent No. 5,544,360. The finding of infringement hinged on whether...
Claim Interpretation and Definiteness of Terms of Degree
In Kitsch LLC v. Deejayzoo, LLC (Case No. LA CV19-02556 JAK (RAOx)) the Central District of California interpreted claims of U.S. Patent No. 10,021,930 that included terms of degree as being sufficiently definite under 35 U.S.C. § 112. The case was initiated by Plaintiff Kitsch, who sought a judgment declaring invalidity of the ‘930 patent. The ‘930 patent is owned...
Claim Interpretation and the Enablement Requirement
Providing a reminder about how to interpret elements of a patent claim when analyzing the claim against prior art during patent prosecution, in Technical Consumer Products, Inc. v. Lighting Science Group Corp. (April 8, 2020), the Federal Circuit vacated a PTAB decision that Appellant Technical Consumer Products’ (“TCP”) failed to show that claims of U.S. Patent No. 8,201,968 were invalid...
Ex Parte Jung De-Designated as Informative by PTAB
A previous post discussed Ex parte Jung, which was designated as Informative by the PTAB on July 10, 2018. In a bulletin posted on August 7, 2018, the PTAB states that: It has come to PTAB’s attention that the decision has not been read as intended. For example, the designation was not intended to reflect new or changed policies with respect to...
“At Least One of” Ex Parte Opinion Designated as Informative by PTAB
The PTAB interpreted claim language in the form of “at least one of A and B” to mean at least one of A and at least one of B in Ex parte Dong-Shin Jung et al. (Appeal No. 2016/008290, designated Informative on July 10, 2018). The claim, in pertinent part, at issue reads: A method for playing back a scene...
Patent Drafting Tip: Take Care with Open-Ended Descriptions
Be careful with the conventional wisdom that tells a patent drafter to use permissive, open-ended language when describing features of an invention. Like me, you may have been taught to avoid “patent obscenities” like “invention,” “objects,” etc., and to use permissive helping verbs wherever possible, i.e., “the widget [could, might, can, may, etc.] be blue,” rather than “the widget is...
PTAB Claim Construction Results in Insufficient Evidence to Support Institution
In its Decision to grant institution of inter partes review in Apple Inc. v. Valencell, Inc. (IPR2017-01947, Decision dated Feb. 26, 2018), the PTAB construed the term “adjacent” to have a different meaning than that proposed by the Petitioner in the Petition requesting inter partes review, and based on this claim construction, the PTAB decided that the Petitioner’s evidence in the...