Tag 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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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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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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Nov 25

Federal Circuit Issues Second Reversal in Favor of a Patent Owner

The Federal Circuit has picked up the pace of issuing actual written opinions regarding PTAB decisions, instead of its previous, steady diet of Rule 36 Judgments. Today, the Court issued its second opinion reversing a Board decision canceling various claims in an inter partes review based on a claim construction issue in Straight Path IP Group, Inc. v. …

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Aug 17

PTAB Addresses Antecedent Basis Issues in IPR

Claims that have terms lacking antecedent basis can present an opportunity for defendants in litigation, including creating a potential invalidity defense under 35 USC §112. It is interesting, therefore, to review the Board’s treatment of these issues in the context of an inter partes review, such as its decision to institute in Google Inc. v. At Home …

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Mar 23

PTAB Declines to Limit Claim Based on Disclosure of Only One Embodiment

The effect of the Broadest Reasonable Interpretation claim construction standard in inter partes review proceedings, forcing a decision that may be different than what could have been expected in district court litigation, has proven tangible in several PTAB decisions. For example, in K-40 Electronics, LLC v. Escort, Inc., IPR2013-00240, the Board construed the challenged claims …

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Oct 13

Board Disagrees with Claim Construction of Prior Proceeding Before the PTO

One of the more disheartening trends to Patent Owners in inter partes review proceedings is the strong willingness of the PTAB to give little or no deference to prior Patent Office proceedings relative to the patent-at-issue. This creates considerable uncertainty relative to these important assets. This issue arose again in Toshiba Corp. v. Intellectual Ventures, IPR2014-00317, US Patent …

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Aug 19

Failure to Identify Structure of Means-Plus-Function Limitation Results in Denial of Ground

Parties have tried different strategies in addressing claim construction in inter partes review petitions. Some have relied strictly on a generic “broadest reasonable interpretation” argument; others have followed a more traditional Phillips analysis – both strategies having achieved varying levels of success.  What is clear, however, is that when a challenged claim is in means-plus-function format, the …

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Aug 11

Patent Expiry During IPR Means Phillips, not BRI, Applies

We previously discussed one Patent Owner’s attempt to avoid the “broadest reasonable interpretation” (BRI) claim construction standard by disclaiming the remainder of the patent-at-issue’s term.  While some uncertainty about that technique remains, what is clear is that when a patent in an IPR expires during the pendency of the proceeding, the limitations of that patent’s …

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