Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 10 OCTOBER 2017

Federal Circuit Schools USPTO On Broadest Reasonable Claim Construction

Foley & Lardner LLP
Explore more from Foley & Lardner LLP

In recent decisions, the Federal Circuit has found error in the USPTO Patent Trial and Appeal Board's approach to obviousness rejections, including its reliance on the doctrine of routine optimization...

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
Author LinkedIn connections

In recent decisions, the Federal Circuit has found error in the USPTO Patent Trial and Appeal Board's approach to obviousness rejections, including its reliance on the doctrine of routine optimization without evidence of an expectation of success, and its reliance on the doctrine of inherency when the record reveals unexpected results. Now, the Federal Circuit has criticized the Board's approach to claim construction, finding in In re Smith International, Inc.  that the Board applied an unreasonably broad construction that was not consistent with the applicant's use of the term in the specification.

The Patent At Issue

The patent at issue was U.S. Patent 6,732,817, which had been rejected in an ex parte reexamination proceeding. The invention relates to tools used for drilling. Claim 28 is representative:

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

View source

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

PTAB/USPTO Update - October 2026

The USPTO has released new templates and guidance for AIA trial proceedings, announced key appointments including a Chief AI Officer, and published updated procedures for patent applications and subject matter eligibility declarations. Director Squires delivered multiple addresses emphasizing the constitutional importance of intellectual property rights while the agency expanded its community engagement efforts and international collaboration through WIPO's Global IP Assignment Platform pilot program.
United StatesIntellectual Property
WilmerHale
WilmerHale
Article

The Trademark Scam Field Guide: Look-Alike Filing Sites, Fake USPTO Notices, And How To Get Out If You’ve Been Caught

A business decides to file a trademark. Someone on the team searches for a familiar online legal-services brand, clicks the first result, and lands on a site with a similar-sounding name, a polished design, five-star reviews, and a low flat fee. The application gets filed. Months later the business learns the “service” was not who they thought it was, the filing was signed by someone with no authority to sign it, and the USPTO has suspended the application along with hundreds or thousands of others from the same shop.
United StatesIntellectual Property
Harness IP
Harness IP
Article

Is This Real? Navigating AI Impersonation Under New And Existing Laws

Is this AI-generated, or is it real? As generative AI tools have become increasingly capable of creating realistic images, videos, and audio, they have also made it easier to impersonate real people without their consent. In response, states are increasingly adopting laws that impose civil and criminal liability for certain AI-generated content that replicates an individual’s identity, likeness, voice, or other personal attributes.
United StatesIntellectual Property
Wiley Rein
Wiley Rein
Article

Texas Governor Abbott Directs TCEQ To Freeze All Data Center Permits In A Whole-of-Government Action

Governor Greg Abbott has ordered the Texas Commission on Environmental Quality to immediately halt all environmental permits for data center projects, expanding a statewide regulatory freeze that now encompasses power, water, and environmental approvals. This directive establishes strict operational mandates requiring data centers to fully fund infrastructure costs, report all resource consumption...
United StatesEnvironment
Foley & Lardner LLP
Foley & Lardner LLP
Article

September 2026 U.S. Sanctions Roundup: “Operation Economic Outcast” Intensifies Against Iran, Cuba Rules Tighten, And OFAC Overhauls Its Regulations

The U.S. Treasury's Office of Foreign Assets Control (OFAC) intensified its sanctions enforcement in September 2026, with sweeping actions targeting Iran's aviation and financial sectors, new Cuba sanctions regulations, and a comprehensive overhaul of its enforcement architecture. How will these expanded restrictions and the new presumption of denial for Iran-related licenses reshape compliance strategies for multinational companies and financial institutions?
United StatesGovernment, Public Sector
Foley & Lardner LLP
Foley & Lardner LLP
Article

California Enacts Seven Data Center Bills, Effective January 1, 2027: New Tariff, Entitlement, And Disclosure Rules For Hyperscalers, Developers, And Power Producers

California Governor Newsom signed seven data center bills into law on September 21, 2026, establishing a comprehensive regulatory framework that takes effect January 1, 2027. These bills create new tariff regimes administered by the California Public Utilities Commission, impose extensive reporting requirements on data center operators, and establish water disclosure mandates and CEQA treatment protocols.
United StatesEnergy and Natural Resources
Foley & Lardner LLP
Foley & Lardner LLP
Article

No More Counting Zeros: IRS Proposed Rules Make Dependent Care FSA Testing Easier And May Open The Door To The $7,500 Limit

Proposed IRS regulations would significantly simplify dependent care assistance program (DCAP) nondiscrimination testing by excluding employees who receive no benefits from the 55% average benefits test. This participant-only approach should reduce testing failures and the need for employers to cap highly compensated employees’ elections.
United StatesEmployment and HR
Foley & Lardner LLP
Foley & Lardner LLP
Article

Texas Escalates Data Center Oversight With Attorney General Water-Use Investigation

Texas has launched a sweeping investigation into hundreds of data center developments that failed to comply with mandatory water use surveys, marking the latest escalation in a seven-week regulatory crackdown. The state's actions have frozen permits, paused interconnection studies, and exposed projects to criminal and civil enforcement, all while the industry faces mounting scrutiny over its rapidly growing demands on electricity and water infrastructure. With multiple state agencies now coordinating enforc
United StatesEnergy and Natural Resources
Foley & Lardner LLP
Foley & Lardner LLP
Article

More Rigs Than A Year Ago, Higher Costs, And Service Prices That Haven’t Caught Up

Oilfield service firms responding to the Dallas Fed Energy Survey for the third quarter of 2026 reported substantially broader increases in input costs than in the prices they received. The input-cost index was 60.4, compared with a prices-received index of 16.3. Each index represents the percentage of respondents reporting an increase minus the percentage reporting a decrease.
United StatesEnergy and Natural Resources
Foley & Lardner LLP
Foley & Lardner LLP
Article

A Reprieve, Not A Reversal: California Revises Its Stay-or-Pay Law

California employers face new decisions about compensation arrangements following Governor Newsom's signing of Assembly Bill 1697, which postpones restrictions on employment-related repayment obligations and expands statutory exceptions. The legislation raises practical questions about whether changes already made to sign-on bonuses, retention agreements, and other compensation structures should remain in place or be reconsidered under the amended law.
United StatesEmployment and HR
Foley & Lardner LLP
Foley & Lardner LLP
Article

Diesel Stocks Are Expected To Fall Below 100 Million Barrels. Check Your Fuel Clauses.

Diesel prices have shattered records, hitting $6.529 per gallon nationally while distillate inventories plunge below five-year lows and are expected to remain there through most of 2027. With crack spreads exceeding $106 per barrel and global supply disruptions intensifying, fleet operators and oilfield services companies face mounting fuel costs that many existing contracts weren't designed to handle.
United StatesEnergy and Natural Resources
Foley & Lardner LLP
Foley & Lardner LLP