LexisNexis® Legal Newsroom
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...

Estoppel by Inaction, BPAI Forecloses Argument in Patent Reexamination

Silence in Original Prosecution History Used Against Patent Owner As discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis . In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary...

Troutman Sanders LLP: Defendant Cashes-In Bet on Prosecution History Estoppel

By Matthew Osborne Judge Hilton, in a textbook case of Prosecution History Estoppel , granted a fitness equipment manufacturer summary judgment of non-infringement without breaking a sweat. The 24 page opinion in Fitness Gaming Corp. v. Icon Health & Fitness, Inc. , Case No. 1:11CV200, 2011...

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...