IN RE VARMA (Fed. Cir. 2016) (P) – The indefinite article “a” cannot serve to negate an otherwise clear relationship among claim elements

by Steve Driskill | Mar 10, 2016 | [sub] claim context, Claim Interpretation

The indefinite article “a” cannot serve to negate a relationship among claim elements that is otherwise made clear by context. Here, for example, the claimed “a statistical analysis request corresponding to two or more selected investments” was found to require that a...

BAMBERG v. DALVEY (Fed. Cir. 2016) (P) – Distinguishing prior art as “undesired” may limit the scope of the claims

by Steve Driskill | Mar 9, 2016 | [sub] specification, [sub] written description, Adequate Disclosure, Estoppel / Disclaimer

Distinguishing the prior art as “undesired” is equivalent to distinguishing it as “inferior” and may therefore limit the scope of the claims as necessarily excluding the undesired features. Here, for example, a broad claim added during an interference to cover a...

IN RE QUEEN’S UNIVERSITY AT KINGSTON (Fed. Cir. 2016) (P) – Patent-agent privilege exists as an independent privilege from but akin to attorney-client privilege

by Steve Driskill | Mar 7, 2016 | [sub] privilege, Client Relations

Patent-agent privilege exists as an independent privilege from but akin to attorney-client privilege and functions to shield from discovery communications between an applicant and its patent agent that are reasonably necessary and incident to the prosecution of...

ULTIMATEPOINTER, L.L.C. v. NINTENDO CO LTD (Fed. Cir. 2016) (P) – Functional limitations in an apparatus claim are not indefinite when they recite a capability of an element

by Steve Driskill | Mar 1, 2016 | [sub] mixed statutory classes, Indefiniteness

Functional limitations in an apparatus claim do not render the claim indefinite when they merely recite a capability of a given element as opposed to requiring that the function be actually performed to trigger infringement. Here, for example, “a handheld device”...

BLUE CALYPSO, LLC. v. GROUPON, INC. (Fed. Cir. 2016) (P) – (1) Mere absence of a claim term from the specification alone does not establish a lack of written description; (2) A reference available only via a personal webpage does not automatically constitute a printed publication

by Steve Driskill | Mar 1, 2016 | [sub] printed publications, [sub] written description, Adequate Disclosure, Prior Art

(1) The PTO must do more than state that a claim term is not literally recited in the specification to establish a lack of written description support for that term. Here, for example, the specification was found to adequately support the terms “endorsement tag” and...