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Intended Use Preamble Not Limiting; Diligence Must Only Be Reasonably Continuous

In an opinion addressing claim construction and priority dates, the US Court of Appeals for the Federal Circuit explained that preamble language is not limiting when it merely recites an intended use, and that diligence need...more

Same Claim, Different Petitioner: Second IPR Permitted During Pendency of First

Addressing discretionary denial of institution of a new inter partes review (IPR) petition where the challenged claim is already the subject of an instituted IPR proceeding, the Patent Trial and Appeal Board (PTAB) decided...more

Consistent Witness Testimony Gives Teeth to Assertion of Public Availability

In an opinion addressing the sufficiency of corroborating evidence regarding public availability of a catalog, the US Court of Appeals for the Federal Circuit concluded that prior art status was established based on...more

PTAB May Disregard New Evidence Presented at Oral Argument

The US Court of Appeals for the Federal Circuit concluded that the Patent Trial and Appeal Board (PTAB) is not required to consider evidence presented for the first time at oral argument in an inter partes review (IPR). Dell...more

PTAB Free to Adopt Claim Constructions Independent of Party Contentions

The US Court of Appeals for the Federal Circuit affirmed that the Patent Trial and Appeal Board (PTAB) may arrive at its own claim broadest reasonable interpretation (BRI) independent of those proffered by the parties and...more

When Distinguishing Statements May Be Considered Disclaimers of Claim Scope

Addressing disclaimer of claim scope, the US Court of Appeals for the Federal Circuit affirmed the district court’s summary judgment of non-infringement, finding that the patentee clearly and unmistakably disclaimed...more

IP Update, Vol. 16, No. 4, April 2013

Obviousness-Type Double Patenting May Exist When There Is Neither Common Ownership nor Common Inventorship - Addressing an obviousness-type double patenting rejection, the U.S. Court of Appeals for the Federal Circuit...more

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