News & Analysis as of

Patent Trial and Appeal Board Preamble

McDermott Will & Emery

For Statutory Equivalents, Even One Means May Be Enough

A US Patent & Trademark Office (PTO) appeals review panel decided that a means-plus-function (M+F) claim element supported by the disclosure of only a single species is not invalid for indefiniteness or lack of written...more

Knobbe Martens

Federal Circuit Review - August 2021

Knobbe Martens on

It’s No Secret That a Related Company’s Physical Presence in a Jurisdiction May Not Be Enough For Proper Venue - In Andra Group, LP v. Victoria’s Secret Stores, LLC, Appeal No. 20-2009, The Federal Circuit held that an...more

Akin Gump Strauss Hauer & Feld LLP

Failure to Identify Prior Art Disclosure of a Limiting Preamble Dooms IPR Petition

The Patent Trial and Appeal Board denied institution of a petition for inter partes review (IPR), in part because an allegedly anticipatory prior art patent lacked an element of what the board determined was a limiting...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Preambles: Limitation or Not?

In Shoes by Firebug LLC v. Stride Rite Children’s Group, LLC, the Federal Circuit held that the same preamble limits the scope of the claims in one patent, but does not limit the scope of the claims in another patent. ...more

McDermott Will & Emery

Lights Out for Light-Up Shoe Patent, Thanks to Non-Limiting Preamble

Finding that a patent’s preamble was not limiting and the patent owner’s secondary considerations of non-obviousness were weak, the US Court of Appeals for the Federal Circuit upheld a finding of obviousness by the Patent...more

Knobbe Martens

Preamble Found Limiting Where It Supplied Antecedent Basis for Other Claim Limitations

Knobbe Martens on

SHOES BY FIREBUG LLC v. STRIDE RITE CHILDREN'S GROUP - Before Lourie, Moore, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: In similar claims of two related patents, one preamble was limiting...more

Knobbe Martens

Federal Circuit Review - November 2019

Knobbe Martens on

The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances  In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more

McDermott Will & Emery

Travel Trailer Pulls Patent Around Prior Art

McDermott Will & Emery on

In an appeal stemming from the denial of a patent application under § 102(b), the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) by holding that the claims’ preambles were claim...more

Knobbe Martens

Preamble term was a structural limitation of the claims

Knobbe Martens on

IN RE: DAVID FOUGHT, MARTIN CLANTON - Before Newman, Moore, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: A preamble description of the invention as a “travel trailer” was a structural limitation....more

Jones Day

Mere Similarity Between References is Insufficient Rationale for Obviousness

Jones Day on

On May 8, 2019, the Patent Trial and Appeal Board denied institution of inter partes review in William Wesley Carnes, Sr., Inc. v. Seaboard Int’l Inc., No. IPR2019-00133, holding that the mere fact that prior art references...more

Knobbe Martens

Federal Circuit Review - April 2019

Knobbe Martens on

Just Because Something May Result From a Prior Art Teaching Does Not Make it Inherent in that Teaching - In Personal Web Technologies, LLC v. Apple, Inc., Appeal No. 2018-1599, the Federal Circuit clarified that the mere...more

McDermott Will & Emery

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

McDermott Will & Emery on

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

Mintz - Intellectual Property Viewpoints

Patent Claim Preamble Lessons from Arctic Cat Inc. v. GEP Power Products

The general rule is that a patent claim’s preamble does not limit the claim unless the preamble gives life, meaning, and vitality to the claim. The Federal Circuit’s recent decision in Arctic Cat Inc. v. GEP Power Products,...more

Knobbe Martens

Arctic Cat Inc. v. GEP Power Products, Inc.

Knobbe Martens on

Federal Circuit Summary - Before Prost, Reyna, Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Where the preamble of a claim merely identifies an intended use and does not impose a structural...more

Knobbe Martens

Acceleration Bay, LLC v. Activision Blizzard Inc.

Knobbe Martens on

Federal Circuit Summary - Before Prost, Moore, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Omitting a transition phrase between the preamble and the body of a claim does not cause terms in the...more

15 Results
 / 
View per page
Page: of 1

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide