Category Archive: Claim Construction

Dec 22

Unreasonable Claim Construction Causes PTAB Reversal

  In a fairly case-specific claim construction analysis, the Federal Circuit reversed the PTAB today in D’Agostino v. Mastercard, Int’l, 2016-1592, -1593 (Fed. Cir. Dec. 12, 2016), finding that the Board erred in determining the challenged claims to be unpatentable because, as a matter of logic, the prior art could not anticipate or render those claims. The patent …

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Nov 10

Federal Circuit Rejects Patentee’s Effort to Narrow Claim Scope

One wrinkle of IPR practice is that patentees are often in the position of advocating a narrower claim scope than the challenger—just the opposite of what is usually seen in district court litigation.  The narrowing strategy is logical—particularly where there is very close prior art, a patentee may need to seek a narrow construction in …

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Aug 30

Federal Circuit Demonstrates Willingness to Rein in PTAB’s Onerous Idle Free Rules Regarding Claim Amendments

Patentees have been generally frustrated with the Board’s unwillingness to grant motions to amend. The Board’s Idle Free case, and its progeny, have added a number of requirements to a motion to amend that are above and beyond the simple requirements set forth in the IPR implementing statute. While the Federal Circuit has, generally, stated that …

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Apr 25

Supreme Court Hears Arguments in Cuozzo Case

We should soon find out whether the Federal Circuit will again face reversal at the hands of the Supreme Court in a patent case. Today, the Court heard oral arguments in the case of In re Cuozzo, the first IPR decision to reach the highest court. The transcript of the proceeding can be found HERE. Reading the reaction …

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Mar 15

Federal Circuit Reverses Because PTAB Relied Upon Argument First Raised at Oral Argument

In a decision today from the Federal Circuit, in Dell Inc. v. Acceleron, LLC, 2015-1513, -1514 (March 15, 2016), involving US Patent No. 6,948,021, the PTAB was reversed because its Final Written Decision relied upon a new argument that was first raised by Petitioner in oral argument. In the underlying IPR, the PTAB determined that claims …

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Feb 24

Patent Owner’s IPR Statements May Constitute A “Disclaimer” of Claim Scope In Litigation

It is well-established that a patent owner’s statements about a claim term made during prosecution can be viewed as a disclaimer of claim scope during the Markman phase of litigation. Similarly, clear and unambiguous statements made in the patent specification can restrict claim scope during litigation. Several district courts have now followed suit with regard …

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Feb 23

Federal Circuit Issues a Rare Reversal on Behalf of Patent Owner in IPR

Yesterday, the Federal Circuit decided five appeals from as many IPR’s filed by Patent Owner PPC Broadband involving claim construction issues, most of which were decided in PPC’s favor. In a first appeal (2015-1364) taken from IPR2013-00342, the court agreed with PPC and held that the Board’s construction of “reside around” was unreasonably broad because …

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Jan 16

Supreme Court to Review Two Key IPR Issues

The Supreme Court granted certiorari today on Cuozzo Speed Technology’s petition to review In re Cuozzo Speed Tech., 793 F.3d 1268 (Fed. Cir. 2015). Cuozzo presented two questions, and the Court has accepted both of them: (1)   Whether the court of appeals erred in holding that, in IPR proceedings, the board may construe claims in …

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Dec 04

Federal Circuit Weighs in on IPR Again, and Judge Newman Regains Her Footing as Pro-Patent Crusader

The Federal Circuit issued another substantive, IPR-related opinion today in Prolitec, Inc. v. ScentAir Techs., Inc., 2015-1020 (Fed. Cir. Dec. 4, 2015) (appealing from IPR2013-00179). The Board had determined that each of the two claims at issue was unpatentable and the Federal Circuit affirmed. On appeal, Patent Owner made five challenges to the PTAB’s decision in the underlying …

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Nov 30

PTAB Finds Different Claim Terms Have the Same Meaning

One of the classic canons of claim construction is that different claim terms in a patent are presumed to have different meanings.  The Board found an exception to that general rule in Air Liquide Large Indus. v. Praxair Technology, IPR2015-01075, Paper 11.  The technology involved storing hydrogen in a salt cavern. The issue involved the …

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