1 Analyses of this federal-register by attorneys

  1. Comma, Comma, Comma, Comma, Comma Chameleon: How Punctuation Can Color IP & Other Legal Rights

    International Lawyers NetworkJames FlynnMarch 28, 2024

    orce an unreasonable interpretation.”), and Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336 (Fed. Cir. 2002) (lack of punctuation in limitation mean claim failed to meet definiteness requirement). And other court panels, such the Federal Circuit in Quality Edge, Inc. v. Rollex Corp., simply concede that, for example, there are “no hard and fast grammatical rule[s]” on the import of placing–or not placing–a comma between two adjectives, and thus courts need to consider other aids of interpretation. This is, admittedly, somewhat indeterminate, at least as far a patent law goes, and the US Manual of Patent Examining Procedure (MPEP) has relatively little of substance to say about punctuation. If one considers “indentation” a replacement or supplement for punctuation, one should recall that the MPEP, at 608.01(m) references the substantive impact of indentations, noting that “there may be plural indentations to further segregate sub-combinations or related steps.”Similarly, the Code of Federal Regulations, 37 C.F.R. § 1.75(i), notes that “[w]here a claim sets forth a plurality of elements . . ., each element . . . of the claim should be separated by a line indentation.” One court in 2021, in a Western District of Texas case named Shotkam LLC v. Tachyon, Inc., even combined references to these items, indentations, and “the use of a semicolon” to determine that a patent claim had three, rather than two, required elements. The Patent Trial and Appeal Board, however, continued to illustrate a more indulgent approach than its European Union Counterpart, with its March 14, 2024 decision in Metacluster LT Uab v. Bright Data Ltd, PGR2022-00061.Metacluster involved a motion by the Patent Owner to “cancel claims 1–34, and substitute claims 35–66,” and to provide “written description support for several claim limitations sought to be added.”The US board not only granted to the motion but did so after providing “Preliminary Guidance” in the form of “information indicating [the Board’s] initial, prelim