Category Archives: PTAB

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Can You Be Reasonably Certain a Water Balloon Is Substantially Filled? Indefiniteness in Tinnus v. Telebrands

In Tinnus Enterprises, LLV v. Telebrands Enterprises (Fed. Cir. 2016-1410), the CAFC considered whether a claim requiring that a container (think water balloon) be “substantially filled” was indefinite under 35 USC §112. Complicating the issue, in this case the district court and the Patent Trial and Appeal Board (PTAB) reached different conclusions regarding the claims … Continue Reading

When Can a Claim Exclude Elements which Might Otherwise Fall under the Claim?

This question was answered in a very recent Federal Circuit case, Inphi Corp v. Netlist Inc., an appeal from the Patent Trial and Appeal Board’s (PTAB) final written decision in an Inter Partes Review (IPR). The petitioner challenging validity argued that the specification did not provide enablement under section 112, first paragraph, for the exclusion … Continue Reading

Claiming Software as a Product not as a Process

Software patent applications present pitfalls not present for other inventions, because software is intangible. To pass muster in the USPTO, software is best described as a process, one of the four categories of patent eligible subject matter under USC 35 § 101. The other three are machine, manufacture and composition of matter. Some software patent … Continue Reading