Changes in the PTAB: From BRI to Ordinary and Customary Meaning

By Carla Vercellone In May of this year, the U.S. Patent and Trademark Office (‘USPTO’) issued a Notice of Proposed Rulemaking. Therein, it solicited and collected comments on the potential switch from the Broadest Reasonable Interpretation (‘BRI’) standard to the Ordinary and Customary meaning of a claim in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Circ. 2005) on claim construction for AIA Trial Proceedings. Due to the public’s favoring of this change, the issue was submitted to the Office of Management & Budget (‘OMB’) for final regulatory approval. Finally, the Final Rule Package was published on October 10th, 2018; it will affect inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB filed on or after the effective date of this new rule, November 13th, 2018. There are three parts within a claim that patent owners need to keep in mind as they write it: it must be written

read more Changes in the PTAB: From BRI to Ordinary and Customary Meaning

Feature Comment: The Broadening Chasm between Claim Interpretation during Litigation and Examination for Product by Process Claims

By Ramya Possett & James G. McEwen[1] Background Traditionally, claim interpretation has differed during a patentability analysis, when the claim is an application being examined, and a validity analysis, when the claim is patented and being analyzed during an infringement action.  The reasons for this difference are understood and accepted in the art, and have been espoused by both the courts and the Patent Office as justified and reasonable.  However, for purposes of preserving the public notice function of the claim, the validity and infringement analysis have generally been consistent since it makes little sense to narrowly interpret a claim for purposes of infringement while broadly interpret the claim for purposes of validity.  Moreover, while the patentability analysis has generally given the examiner more leeway in rejecting claims than might be afforded under the validity analysis, the patentability analysis will generally track the claim interpretation given during subsequent litigation so as to allow the applicants to obtain the broadest coverage

read more Feature Comment: The Broadening Chasm between Claim Interpretation during Litigation and Examination for Product by Process Claims

Federal Circuit Rejects Patent Office’s Interpretation of Flexible To Include Rigid to be Unreasonable and Not Creditable

In In re Buszard, 84 USPQ2d 1749 (Fed. Cir. 2007), applicants’ invention is directed to a flexible polyurethane foam used in a flame retardant composition.  The Examiner rejected the claims as anticipated in view of Eling et al., which describes a rigid foam that is made flexible through crushing.  The Board of Patent Appeals and Interference (BPAI) affirmed the Examiner, and the applicants appealed the BPAI decision on the grounds that the Examiner’s interpretation of the term “flexible” cannot encompass “rigid.”  In reviewing the BPAI decision, the Federal Circuit held that, under the Administrative Procedure Act, 5 U.S.C. ‘706, all decisions from the BPAI are reviewed to determine if the Board’s decision is supported by substantial evidence. Dickinson v. Zurko, 527U.S. 150, 165 (1999).  Moreover, for purposes of anticipation, the record must show that all limitations in the claim are met by a single reference where the claims are given their broadest reasonable interpretation. In reviewing the record and the

read more Federal Circuit Rejects Patent Office’s Interpretation of Flexible To Include Rigid to be Unreasonable and Not Creditable

Federal Circuit Defines Card in Light of Specification to Exclude Coverage of PDA

In E-Pass Technologies, Inc. v. 3Com Corp. 81 USPQ2d 1385 (Fed. Cir. 2007), E-Pass is the assignee of U.S. Patent No. 5,276,311 (the “‘311 patent”), entitled “Method and Device of Simplifying the Use of a Plurality of Credit Cards, or the Like.”  The object of the invention is to provide a method and device for substituting a single electronic multifunction card for multiple credit cards …to address problems associated with carrying multiple cards, “the user needs, and is required to carry about, [only] a single card.”  On February 28, 2000, E-Pass filed a complaint of patent infringement against 3Com Corporation and Palm, Inc. (collectively, “3Com”).  In the complaint, E-pass accused 3Com of inducing consumers to practice the steps of the patented method on its Palm VII and Palm VIIx personal digital assistant (“PDA”) products. 

District Court Uses Extrinsic Evidence to Define URI Since Specification Example Does Not Provide an Alternate Definition

In BEA Systems, Inc. v. Web Balance, Inc., 80 U.S.P.Q.2d 1317 (D.Mass. 2006), after defendant Web Balance, Inc. brought infringement actions against BEA’s corporate clients in Illinois for infringement of U.S. Patent No. 6,128,279 (the  ‘279 patent), BEA’s sought declaratory judgment of non-infringement, invalidity, and unenforceability of the ‘279 patent. The Massachusetts District Court granted BEA’s motion for summary judgment of non-infringement of Web Balance’s patent. As background, BEA’s “Weblogic” software uses a session ID to track a user’s interaction with a particular website when a user does not allow a cookie to track the user’s usage.  The session ID begins with a semicolon and is appended or inserted into the requested web address of the user—“http://www.zzz.com/app;jsessionid=1234.”  The ‘279 patent describes a method and apparatus for web site computer servers to handle incoming requests from client computers using Uniform Resource Identifiers (URIs).  As related to claim 4, the method is for handling user requests, where the server handles the request

read more District Court Uses Extrinsic Evidence to Define URI Since Specification Example Does Not Provide an Alternate Definition

Federal Circuit Finds Term “Rigid” Does Not Encompass Semi-Rigid Devices

In Schoenhaus v. Genesco, Inc., 78 USPQ2d 1252 (Fed Cir. 2006), the Federal Circuit affirmed a district court decision of granting a summary judgment of non-infringement of Schoenhaus’ U.S. Patent No. 5,174,052 (the ‘052 patent) based on the absence of a claimed element from the accused product.  The claimed invention of the ‘052 patent is directed to an orthotic device for preventing hyperpronation of a human foot.  During the prosecution of this patent, the inventors approached the defendants attempting to arrange a license agreement.  After the signing of a confidential disclosure agreement, the defendant entered negotiations with the inventors for 2-1/2 years, but ultimately withdrew from the negotiations. About 8 years later, in 2002, the inventors discovered that the defendants were selling a line of footwear which they believed to infringe the claims of the ‘052 patent.  The inventors filed suits against the defendants alleging infringement of the ‘052 patent, as well as misappropriation of trade secrets and unjust enrichment.  The defendants

read more Federal Circuit Finds Term “Rigid” Does Not Encompass Semi-Rigid Devices