IN RE ZHANG (Fed. Cir. 2016) (NP) – A combination of prior art references is proper even if it eliminates advantages taught by the references

by Steve Driskill | Jun 17, 2016 | [sub] teaching away, Obviousness

A proposed combination of prior art references may be proper even if it would eliminate one or more advantages disclosed in the reference being modified. Here, for example, substituting yarn types in a fabric of the primary reference was found to be proper even though...

IN RE KAYYALI (Fed. Cir. 2016) (NP) – Conflict with mere advantages or preferences identified in the prior art does not constitute teaching away

by Steve Driskill | Jun 14, 2016 | [sub] teaching away, Obviousness

Conflict with mere advantages or preferences identified in the prior art does not by itself constitute teaching away from a proposed combination. Here, for example, the prior art’s expressed preference for automated computer systems over trained clinicians was found...

SAS INSTITUTE, INC. v. COMPLEMENTSOFT, LLC. (Fed. Cir. 2016) (P) – Claim construction cannot be changed in an IPR final decision without an opportunity to respond

by Steve Driskill | Jun 10, 2016 | [sub] inter partes review, PTO Procedure

The PTO may not change its claim construction in the final written decision of an inter partes review without giving both of the parties an opportunity to respond. Here, for example, the Board’s assertion that its change in claim construction was non-prejudicial...

INDACON, INC. v. FACEBOOK, INC. (Fed. Cir. 2016) (P) – Claim differentiation does not apply where the claims are not otherwise identical in scope

by Steve Driskill | Jun 6, 2016 | [sub] claim differentiation, Claim Interpretation

The doctrine of claim differentiation does not apply where the claims are not otherwise identical in scope. Here, for example, while certain claims clearly distinguished between “instances” of text strings and “all instances” of the text strings, the claimed invention...

RUCKUS WIRELESS, INC. v. INNOVATIVE WIRELESS SOLUTIONS (Fed. Cir. 2016) (P) – Broadening statements in the specification may act as a ceiling for claim breadth

by Steve Driskill | May 31, 2016 | [sub] specification, Estoppel / Disclaimer

Broadening statements in the specification may act as a ceiling for claim breadth. Here, for example, the claimed “communications path” was found to be limited to wired communication at the exclusion of wireless communication because the specification, in asserting...