Tag Archives: Broadest Reasonable Interpretation

Federal Circuit Schools USPTO On Broadest Reasonable Claim Construction

In recent decisions, the Federal Circuit has found error in the USPTO Patent Trial and Appeal Board’s approach to obviousness rejections, including its reliance on the doctrine of routine optimization without evidence of an expectation of success, and its reliance on the doctrine of inherency when the record reveals unexpected results. Now, the Federal Circuit has criticized … Continue reading this entry

Federal Circuit Emphasizes Reason In Application Of Broadest Reasonable Interpretation

As we wait for the Supreme Court decision in Cuozzo Speed Technologies, LLC v. Lee, where the Court has been asked to decide whether the USPTO Patent Trial and Appeal Board (PTAB) should apply the “broadest reasonable interpretation” (BRI) of claims during Inter Partes Review proceedings, the Federal Circuit has been providing guidance on how to apply … Continue reading this entry

A Quick Look At The First Patent Trial And Appeal Board Decision In a Covered Business Method Patent Proceeding, SAP America, Inc. v. Versata Development Group, Inc.

On June 11, 2013, the USPTO Patent Trial and Appeal Board (PTAB) issued its first final decision in a covered business method patent (CBM) proceeding, in SAP America, Inc. v. Versata Development Group, Inc. (CBM2012-00001). Although this case is not in the field of pharmaceuticals or biotechnology, a few aspects of this decision will be … Continue reading this entry

USPTO Releases Examination Guidelines On "Definiteness"

On February 9, 2011, the USPTO issued “Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. § 112” and “Supplemental Information for Examining Computer-Implemented Functional Claim Limitations.” The Guidelines have immediate effect, but the USPTO will consider written comments received by April 11, 2011. 35 USC § 112, Second Paragraph The Guidelines relate primarily to the “definiteness” … Continue reading this entry