LexisNexis® Legal Newsroom
Inconsistent Claim Interpretation Practices in Patent Reexamination

DOES THE ORIGINAL PROSECUTION HISTORY FACTOR INTO A BROADEST REASONABLE INTERPRETATION ANALYSIS? It is well established that a broadest reasonable interpretation (BRI) claim analysis is applied in both the prosecution of patent applications as well as in patent reexamination proceedings. In...

Examiner Comments in Prosecution History Discounted as Unskilled?

The relevance of original patent application prosecution history in patent reexamination remains an unsettled issue at the USPTO. As we discussed last month, the MPEP mandates the application of Phillips v. AWH Corp . , 415 F.3d 1303; (Fed. Cir. 2005) ( en banc ) with regard to according a plain...

Patents Post-Grant: Post Grant Petitions to More Closely Scrutinize Means Plus Function Claims

MPF Claim Interpretation Required to Initiate New AIA Proceedings In past posts I have pointed out that in analyzing requests for patent reexamination, Examiner's are trained to apply a Broadest Reasonable Interpretation (BRI) to patented claims. Unfortunately, over emphasis upon this standard...

Patents Post-Grant: USPTO to Apply BRI Claim Standard in Post Grant Proceedings

USPTO Clarifies Stance on BRI Application to Post Grant Proceedings During yesterday's [June 20th] hearing of the Senate Judiciary Committee, Director Kappos explained the various initiatives ongoing at the USPTO with respect to AIA implementation, efforts to address drafting errors in the AIA...

Prosecution History Before the PTAB….Your Mileage May Vary

The Applicability of Prosecution History in a BRI Analysis Whether in a new patent application or in an issued patent being subject to a post grant review proceeding, the USPTO utilizes a Broadest Reasonable Interpretation (BRI) standard for all patent claims . Under this one-size-fits-all standard...

CAFC Endorses Use of BRI in AIA Trial Proceedings

CAFC Decides First IPR Trial Appeal On Feb. 4, in In Re Cuozzo Speed Technologies, LLC , the Court of Appeals for the Federal Circuit (CAFC) decided that the broadest reasonable interpretation (BRI) construct was appropriate for interpreting patent claims in AIA trial proceedings. ( here ) As previously...

A Philips Construction at the PTAB Will Halt Patent Litigation

Patentees: Be Careful What You Wish For...You Just Might Get It Since the passage of the America Invents Act (AIA), the debate has raged as to whether or not the Patent Trial & Appeal Board (PTAB) should apply the broadest reasonable claim interpretation (BRI) for AIA trial proceedings. Some patentees...

PTAB's Use of Broadest Reasonable Interpretation Upheld ... Again

En Banc Rehearing of Cuozzo Appeal Denied In a close decision, the Court of Appeals for the Federal Circuit (CAFC) denied rehearing in In re Cuozzo Speed Technologies (here) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ]. At issue in the request for en banc...

Federal Circuit Upholds Broadest Reasonable Interpretation in CBMs but Revisits Reviewability of Institution Decisions

In its second case in as many days touching on both the broadest reasonable interpretation (BRI) standard and the reviewability of institution decisions, the U.S. Court of Appeals for the Federal Circuit both agreed and disagreed with itself. On July 9, 2015, in Versata Development Group, Inc. v. SAP...

Federal Circuit Affirms PTAB in First Decision on an Appeal of America Invents Act Business

by K. Patrick Herman and Christopher W. Glynn Digest of Versata Dev. Group, Inc. v. SAP Am., Inc. , No 2014-1194 (Fed. Cir. July 9, 2015) (precedential) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ]. On appeal from the United States Patent and Trademark...