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


Concise Summary for 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.



Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Harness, Dickey & Pierce, PLC | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.