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CAFC Affirms PTAB's Decision That Printed Matter Doctrine Can Be Used in Claim Construction

Author: Reza Mollaaghababa

6/04/2018

Read the full post at Post-Grant Counsel

CAFC Affirms PTAB's Decision That Printed Matter Doctrine Can Be Used in Claim Construction

In an inter partes review proceeding, a challenger cannot raise patent-eligibility as a ground of invalidity. Rather, the invalidity grounds are limited to lack of novelty and obviousness. Notwithstanding, in construing claim terms, the PTAB can decide not to give patentable weight to certain claim limitations that are not patent-eligible. In Praxair Distribution., Inc. v. Mallinckrodt Hospital Products IP Ltd., No. 2016-2616, 2016-2656 (Fed. Cir. May 16, 2018) the PTAB had employed the so-called “printed matter doctrine” not to give patentable weight to certain limitations as merely “providing information”  and the CAFC affirmed the PTAB’s claim construction.

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