By Charles L. Gholz2
Introduction
Two recent opinions tee up this issue nicely. They are Robertson v. Timmermans, 90 USPQ2d 1898 (PTOBPAI 2008)(non-precedential)(opinion by APJ Lee for a panel that also consisted of APJs Schafer and Tierney), which held that “copied” claims3 are to be interpreted in light of the specification of the application into which they were “copied,” and Agilent Technologies, Inc. v. Affymetrix, Inc.. 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009)(opinion by Circuit Judge Rader for a panel also consisted of Circuit Judge Mayer and Circuit Judge Posner of the Seventh Circuit, sitting by designation), which held that they are to be interpreted in light of the specification of the application or patent from which they were “copied.”4 However, to understand either opinion, one must consider two older opinions, In re Spina, 979 F.2d 854, 24 USPQ2d 1142 (Fed. Cir. 1992)(opinion by Circuit Judge Newman for a panel that also consisted of Senior Circuit Judge Cowen and Circuit Judge Lourie), which held that they are to be interpreted in light of the specification of the application or patent from which they were “copied,” and Rowe v. Dror, 112 F.3d 473, 42 USPQ2d 1550 (Fed. Cir. 1997)(opinion by Circuit Judge Rader for a panel that al...
