Claim Charts May Contain a Concise Summary fo the Disclosure of a Reference

Ericcson, Inc.v. Intellectual Ventures I LLC, IPR2014-00527 May 30, 2014), the Patent Owner charged that petitioner’s claim charts contained impermissible argument.  The Board disagreed, explaining that it was permissible to summarize the relevant disclosure of a reference:

We do not discern, however, that the claim charts include content that is prohibited. Although quotations from a prior art reference are permitted, and, in many cases, may be preferable, Board rules do not mandate such quotation to the exclusion of other qualified indications of how the prior art teaches the limitations of a claim. To that end, there is no prohibition on the use of a concise summary of the disclosure of a reference as an alternative to quotation from the reference in an element-by-element showing. That Ericsson’s claim charts include summary of the disclosure of the involved references beyond strict quotation does not, in our view, present improper content in the claim charts. We also do not discern that, in this case, the brief introductory or expository phrases that precede expression of the disclosure of a reference in connection with a claim element rise to the level of “argument” that must be excluded from a claim chart.

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About Bryan Wheelock

Education
J.D., Washington University in St. Louis
B.S.E. in Mechanical Engineering, Duke University

Bryan Wheelock’s practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods.

Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies.

In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.