LexisNexis® Legal Newsroom
BPAI Applies an Implied Claim Construction in Patent Reexamination Appeal

BPAI Affirms Claims of Expired Patent in Ex Parte Reexamination The rejection of all claims (save 25, which was confirmed) of expired Patent 4,925,294 , (hereinafter, "'294 Patent") owned by Three-Dimensional Media Group LTD., was affirmed by the BPAI on Monday . In affirming the...

Scope of a Patent's Coverage Determined by Its Claims or by Its Specification?

Arlington Indus. v. Bridgeport Fittings, Inc. , 2011 U.S. App. LEXIS 1118 (Fed. Cir. Jan. 20, 2011) [ enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law ] highlights the court's deep division over the role that the specification of a patent...

Patents Post-Grant: CAFC Affirms Rejection of Means Plus Function Claims in Patent Reexamination

In re Lund Affirmed Per Curiam Last May, Ex parte Lund was decided by the Board of Patent Appeals & Interferences (BPAI) ( here ). In the decision, the Board affirmed the rejection of the reexamined claims based upon the construction of the claim language electrical connecting means adapted to...

Patents Post-Grant: Reigning in Patent Reexamination Grant Rates

Claim Interpretation Practices in Patent Reexamination As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found ( here ). Throughout...

Patents Post-Grant: CAFC Sends NTP Patent Reexaminations Back to USPTO

BPAI Definition of Email Found Unreasonable by CAFC Last February NTP appealed the invalidity findings of the USPTO to the Court of Appeals for the Federal Circuit (CAFC). At that time I predicted that the case would shift back to the USPTO on a disputed claim construction issue . Today, the...

Patents Post-Grant: Can a Favorable Patent Reexamination Record Undo a Markman Order?

Parallel Patent Reexamination Qualifies as Newly Discovered Evidence Under Fed. R. Civ. P. 60(b) It is well established that the USPTO utilizes different standards of evidence and claim interpretation in patent reexamination. Likewise, there is no presumption of validity in patent reexamination...

Sheppard Mullin Richter & Hampton LLP: Federal Circuit Narrows Claim Construction Options in Game Controller Suit

By Ryan Lindsey and Nick Setty In Thorner v. Sony Computer Entertainment America , LLC (Case No. 2011-1114, Feb. 1, 2012) (Moore*, Rader & Aiken (D. Or. sitting by designation)) [ enhanced version available to lexis.com subscribers ], the Federal Circuit reiterated the prohibition against importing...

Patents Post-Grant: Perceived Patent Reexamination Misstep Haunts Plaintiff

A successful reexamination from a defendant perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation may provide key evidence...

Troutman Sanders LLP: Federal Circuit Reverses Judge Hilton Claim Construction in Software Patent Suit

By Dabney Carr In a July 31 decision, the Federal Circuit reversed Judge Claude Hilton's claim construction in an Eastern District of Virginia patent infringement suit relating to software that enables one computer to access another computer over the Internet. 01 Communique Lab., Inc. v. LogMeIn...

Patents Post-Grant: CAFC Contemplates De Novo Review of USPTO Claim Constructions

Court Troubled by Own Inconsistent Precedent As explained very recently by Director Kappos, the USPTO has a well established practice of applying a broadest reasonable claim interpretation (BRI) in proceedings before the USPTO. For this reason, Director Kappos explained that although the AIA was silent...

Patents Post-Grant: PTO Scolded for Lax Patent Reexamination Practices

Failure to Focus Means Plus Function Debate in Patent Reexamination Last week [Jan. 8th] in In re Avid Identification Systems Inc . [ enhanced version available to lexis.com subscribers ], the CAFC affirmed the USPTO's rejection of certain claims of U.S. Patent 5,499,017 in ex parte patent reexamination...

Congress Debates USPTO Use of District Court Claim Construction Practices

Hearing to Consider Issues for Mark-up Although the Innovation Act ( H.R.. 3309 ) was only introduced last week, as expected , Congress is wasting no time pushing the “patent reform” issue forward. Today at 10AM the House Judiciary Committee will hold a hearing on the content of the Bill...

Supreme Court Will Hear Dispute Over De Novo Claim Construction Review

WASHINGTON, D.C. — (Mealey’s) The question of which standard — de novo or only for clear error — the Federal Circuit U.S. Court of Appeals should apply when reviewing a district court’s factual findings in support of a claim construction in patent cases will be argued at...

Federal Circuit Affirms No Legally Sufficient Evidence Could Support a Finding of Infringement

Mformation Technologies Inc. et al. v. Research In Motion Ltd. et al. , No. 2012-1679, 2013-1123, 2014 U.S. App. LEXIS 16181 (Fed. Cir. Aug. 22, 2014) (Prost, J.). Click Here for a copy of the opinion [an enhanced version of this opinion is available to lexis.com subscribers] . Mformation sued...

The PTAB Cannot Adopt a Phillips Claim Analysis for AIA Trial Proceedings

Requests for Comment Touch Upon Claim Construction Standards at the PTAB Back in June, the USPTO issued a Request For Information (RFI) in the Federal Register. The Notice , entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board...

Supreme Court: Patent Claim Construction Subject to ‘Clear Error’ Review

WASHINGTON, D.C. — (Mealey’s) In a divided ruling today, the U.S. Supreme Court deemed improper a practice by the Federal Circuit U.S. Court of Appeals of reviewing de novo district court findings — including subsidiary facts — in support of patent claim construction ( Teva Pharmaceuticals...

Federal Circuit's Application of New Teva Standard for Appellate Review of Claim Construction Changes Outcome in Lighting Ballast

Previously, on January 2, 2013, the Court of Appeals for the Federal Circuit decided the claim construction issues in Lighting Ballast Control LLC v. Philips Electronics North America Corp. (“ Lighting Ballast I ”). In that decision, the Federal Circuit applied the previously applicable standard...