MERCK & CIE v. WATSON LABORATORIES INC. (Fed. Cir. 2016) (P) – It is not necessary that an actual sale be consummated to trigger the on-sale bar under 35 U.S.C. § 102(b)

by | May 13, 2016 | [sub] offer for sale, Prior Art

While an offer for sale must qualify as a commercial offer under the law of contracts to trigger the on-sale bar under 35 U.S.C. § 102(b), it is not necessary that an actual sale ever be consummated. Here, for example, a fax detailing price and delivery terms,...

HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. (Fed. Cir. 2016) (P) – Boilerplate disclaimers purporting to limit the specification to preferred embodiments will be ineffective

by | May 12, 2016 | [sub] importing limitations, Claim Interpretation

Boilerplate disclaimers characterizing all descriptions in the specification as being directed to preferred embodiments only will be ineffective at best, and may be problematic in establishing adequate written description support. Here, for example, statements that...

ENFISH, LLC v. MICROSOFT CORPORATION (Fed. Cir. 2016) (P) – Improvement to computer functionality is not an abstract idea under step one of the Mayo/Alice framework

by | May 12, 2016 | [sub] Alice step one, Subject Matter Eligibility

Improvement to computer functionality is not an abstract idea under step one of the Mayo/Alice framework. Here, for example, claims directed to a “self-referential” logical model for a computer database were found to be sufficiently concrete rather than abstract...

INTELLIGENT BIO-SYSTEMS, INC. v. ILLUMINA CAMBRIDGE LTD. (Fed. Cir. 2016) (P) – An IPR reply brief can be ignored in its entirety if any portion thereof includes new arguments

by | May 9, 2016 | [sub] inter partes review, PTO Procedure

A reply brief submitted during inter partes review proceedings can be ignored in its entirety if any portion thereof includes new arguments raised for the first time. Here, for example, a reply brief including arguments not in response to those raised in the...