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BPLA Case Law Committee Meeting
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When: 8:30 AM
Where: Hamilton Brook Smith Reynolds
530 Virginia Road
Concord, Massachusetts  01742
United States
Contact: N. Scott Pierce, Co Chair

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BPLA Case Law Meeting


Friday, April 7, 2017

 8:30 AM to 9:45 AM


Discussion Leader

Alexander Adam, Ph.D
Hamilton Brook Smith Reynolds

Location Host

N. Scott Pierce, Principal
Hamilton Brook Smith Reynolds




530 Virginia Street

Concord, MA 01742



The topic will be

MPHJ Tech. Invs. v. Ricoh Ams. Corp.

(Fed. Cir. Feb. 13, 2017)

Case Law (click here)




MPHJ v. Ricoh explores the relationship between disclosure in a provisional application and its ultimate impact on  claim construction, at least when applied under the “broadest reasonable interpretation” standard (BRI) of Patent Office proceedings, including Inter Partes Review.  For example, can, or should, omission in a non-provisional application of teachings that appear in a provisional application necessarily be viewed as limiting the scope of claims?   If not, what are the implications, if any, of such an omission?   Is the omission not remedied by “incorporation by reference” of those teachings in the non-provisional application?  Should the omission be similarly treated under the “correct construction” of the Phillips standard of the ordinary and customary meaning a claim term as understood by a person of ordinary skill in the art at the time of the invention, which is employed during litigation?  If not, does this unfairly hobble patents in Inter Partes Review?  How does this affect examination of claims prior to patent grant? 

The majority opinion and Judge O’Malley’s thoughtful concurrence-in-part and dissent-in-part will be discussed.




 BPLA Case Law Committee Co Chairs
 James Lampert, WilmerHale, Retired
 Yvonne Lee, WilmerHale
 N. Scott Pierce, Hamilton Brook Smith Reynolds
 Valarie Rosen, Cabot Corporation
 David Thibodeau, Cesari and McKenna




Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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