LEXINGTON LUMINANCE LLC v. AMAZON.COM INC. (Fed. Cir. 2015) (NP) – Open Markush group may be interpreted as definite closed group when the intrinsic record is reasonably clear

by | Feb 9, 2015 | [sub] breadth, Indefiniteness

Even an otherwise improper open Markush group may be interpreted as a definite closed group when the intrinsic record is reasonably clear in indicating what the claim intended to cover. Here, for example, a semiconductor substrate claimed as being “selected from the...

FENF, LLC v. SMARTTHINGZ, INC. (Fed. Cir. 2015) (NP) – Differentiation among claims can prevent restrictions on one claim term from being applied to other terms

by | Feb 6, 2015 | [sub] claim context, Claim Interpretation

Differentiation among the claims can serve to counter an inference that restrictions on one claim term should be applied to other claim terms. Here, for example, “posts” and “separators” were found to be sufficiently distinct elements based on their inclusion in...

IN RE CUOZZO SPEED TECHNOLOGIES, LLC (Fed. Cir. 2015) (P) – PTO’s decision whether to institute Inter Partes Review (IPR) is not appealable to the Federal Circuit

by | Feb 4, 2015 | [sub] overlapping jurisdiction, PTO Procedure

The PTO’s decision whether or not to institute Inter Partes Review (IPR) is not appealable to the Federal Circuit. Here, for example, the Federal Circuit found that it lacked jurisdiction to review the PTO’s decision to institute IPR, even after a final decision....

PAPST LICENSING v. FUJIFILM CORPORATION (Fed. Cir. 2015) (P) – A claim term’s interpretation should not be irrelevant to the invention’s advance over the prior art

by | Feb 2, 2015 | [sub] consistency, Claim Interpretation

It is generally improper to impose requirements on claim terms that are foreign to what the specification describes as the invention’s relevant advance over the prior art. Here, for example, it was found to be improper to require the claimed “virtual” files to be...

IN RE IMES (Fed. Cir. 2015) (P) – Broadest reasonable interpretation rubric cannot focus solely on a literal interpretation of claim terms

by | Jan 29, 2015 | [sub] broadest reasonable interpretation, Claim Interpretation

The broadest reasonable interpretation rubric employed by the PTO cannot ignore characteristic features of claim terms in favor of a purely literal interpretation of those terms. Here, for example, the broadest reasonable interpretation of a “wireless” communication...