How does the Federal Circuit’s decision in Williamson v. Citrix affect 112(f) interpretation?
The Federal Circuit’s decision in Williamson v. Citrix Online, LLC significantly impacted the interpretation of 35 U.S.C. 112(f). According to MPEP 2181: “The Federal Circuit has stated that the presumption that 35 U.S.C. 112(f) does not apply to a claim limitation that does not use the term “means” is overcome when the claim term fails…
Read MoreWho can appeal a decision in an inter partes reexamination proceeding to the Federal Circuit?
For inter partes reexamination proceedings commenced on or after November 2, 2002, both the patent owner and the third party requester can appeal a decision of the Patent Trial and Appeal Board (PTAB) to the U.S. Court of Appeals for the Federal Circuit. This is stated in MPEP 2683: “A patent owner and/or a third…
Read MoreWhat is the time limit for filing an appeal in an inter partes reexamination proceeding?
According to MPEP 2683, the time limit for filing an appeal in an inter partes reexamination proceeding is specified in 37 CFR 1.304(a)(1): “The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal Circuit (§ 1.302) or for commencing a civil action (§ 1.303) is two months from…
Read MoreWhat are the steps for filing an appeal to the Federal Circuit in an inter partes reexamination?
According to MPEP 2683, the steps for filing an appeal to the Federal Circuit in an inter partes reexamination are: In the USPTO, timely file a written notice of appeal directed to the Director in accordance with 37 CFR 1.302 and 1.304. In the Federal Circuit, file a copy of the notice of appeal and…
Read MoreWhat is the standard for determining compliance with the written description requirement?
The standard for determining compliance with the written description requirement is an objective one. As stated in MPEP 2163.02, the essential question is: “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” This standard comes from the Federal Circuit case In re…
Read MoreWhat are the options for a patent owner to appeal a decision of the Board in a reexamination proceeding?
A patent owner who is not satisfied with the decision of the Board in a reexamination proceeding has limited options for appeal. According to MPEP 2279, “The patent owner may appeal the decision of the Board only to the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. 141.” This applies…
Read MoreCan a party participate in another party’s appeal in an inter partes reexamination?
Yes, in inter partes reexamination proceedings commenced on or after November 2, 2002, both the patent owner and the third party requester can participate in each other’s appeal to the Federal Circuit. According to MPEP 2683: “The patent owner and the third party requester may each be a party to, i.e., participate in, each other’s…
Read MoreHow has the Federal Circuit’s decisions in Ochiai and Brouwer affected the need for pre-AIA 35 U.S.C. 103(b)?
The Federal Circuit’s decisions in In re Ochiai and In re Brouwer have significantly impacted the need for relying on pre-AIA 35 U.S.C. 103(b). The MPEP notes: In view of the Federal Circuit’s decisions in Ochiai and Brouwer, an applicant’s need to rely upon pre-AIA 35 U.S.C. 103(b) should be rare. These cases addressed whether…
Read MoreWhat is the legal basis for appeals in patent reexamination proceedings?
The legal basis for appeals in patent reexamination proceedings is primarily found in U.S. statutes and has evolved over time. According to MPEP 2279: 1. For reexaminations filed on or after November 29, 1999, and commenced before September 16, 2012, the basis is “the version of 35 U.S.C. 141 and 35 U.S.C. 145 as they…
Read MoreHow does insignificant computer implementation relate to insignificant extra-solution activity?
Insignificant computer implementation and insignificant extra-solution activity are related concepts in patent law, but they are treated slightly differently. The MPEP 2106.05(g) addresses this relationship: “Some cases have identified insignificant computer implementation as an example of insignificant extra-solution activity. See e.g., Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1323-24, 101 USPQ2d…
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