Claim Construction of APIs

by MAnderson | Jul 17, 2020 | Claim Interpretation

For nearly a decade now, Google and Oracle have been litigating (filed Aug. 13, 2010) over the applicability of copyright to application programming interfaces (API). Over that time period, APIs have only become more widespread and essential to the content delivery...

Strategies for Handling AIA Section 14 Rejections

by MAnderson | May 20, 2020 | [sub] printed matter, Claim Interpretation, Obviousness

Even before the Supreme Court case Alice v. CLS Bank limited the areas of economic and financial innovation which could be patented, Congress was looking at ways to restrict patent applications and patent enforcement in these fields. In addition to business method...

INTERTAINER, INC. v. HULU, LLC (Fed. Cir. 2016) (NP) – A functionally-described element “adapted to” perform multiple functions does not exclude multiple elements

by Steve Driskill | Sep 26, 2016 | [sub] claim context, Claim Interpretation

A functionally-described element “adapted to” perform a plurality of functions does not exclude multiple elements performing those functions when no structural limitations are recited. Here, for example, a “link program” adapted to “both … interrupt streaming of the...

IN RE CSB-SYSTEM INTERNATIONAL, INC. (Fed. Cir. 2016) (P) – The PTO must apply the Phillips standard for claim construction whenever a patent expires

by Steve Driskill | Aug 9, 2016 | [sub] broadest reasonable interpretation, Claim Interpretation

The PTO must apply the Phillips standard for claim construction whenever a patent expires, even in the middle of proceedings that had previously used the broadest reasonable interpretation standard. Here, for example, the Board’s continued use of the broadest...

RESPIRONICS, INC. v. ZOLL MEDICAL CORPORATION (Fed. Cir. 2016) (NP) – Unclaimed elements essential for operation of the claimed invention need not necessarily be claimed

by Steve Driskill | Jul 29, 2016 | [sub] broadest reasonable interpretation, Claim Interpretation

Unclaimed elements that are essential for operation of the claimed invention need not necessarily be claimed. Here, for example, information about how “patient compliance data” was obtained for the claimed recording of such information was found to be permissibly...

IN RE LF CENTENNIAL LIMITED (Fed. Cir. 2016) (NP) – A common but generic characteristic shared between elements does not support a conclusion of equivalence

by Steve Driskill | Jun 29, 2016 | [sub] broadest reasonable interpretation, Claim Interpretation

A common but generic characteristic shared by a claim element and a prior art element does not support even a broadest reasonable interpretation that one can be the other. Here, for example, a “spine” and a “side panel” of a TV console were found to be distinct even...