ACCO BRANDS CORPORATION v. FELLOWES, INC. (Fed. Cir. 2016) (P) – It is generally obvious to try any of a finite number of arrangements of prior art elements

by Steve Driskill | Feb 22, 2016 | [sub] motivation, Obviousness

It is generally obvious to try any of a finite number of arrangements of prior art elements even if a subset of those arrangements fall outside of the claim scope at issue. Here, for example, the fact that there were only two feasible arrangements of two sensors...

THE OHIO WILLOW WOOD COMPANY v. ALPS SOUTH, LLC (Fed. Cir. 2016) (P) – Withholding information that directly counters arguments before the PTO constitutes inequitable conduct

by Steve Driskill | Feb 19, 2016 | Inequitable Conduct

Withholding information that runs directly counter to your central arguments before the PTO constitutes inequitable conduct. Here, for example, withholding earlier letters from a competitor’s in-house counsel that would have corroborated a declaration from the...

SECURE WEB CONFERENCE CORP. v. MICROSOFT CORPORATION (Fed. Cir. 2016) (NP) – Touting a characteristic of a claimed feature as advantageous without counterexamples renders it essential

by Steve Driskill | Feb 17, 2016 | [sub] specification, Estoppel / Disclaimer

Repeatedly touting a particular characteristic of a claimed feature as being advantageous without providing any broader embodiments reinforces that characteristic as essential. Here, for example, a “security device” was found to be limited to a stand-alone device that...

NIKE, INC. v. ADIDAS AG (Fed. Cir. 2016) (P) – No heightened standard to establish patentability of IPR substitute claims over prior art not of record

by Steve Driskill | Feb 11, 2016 | [sub] inter partes review, PTO Procedure

Absent an allegation of conduct violating the duty of candor, there is no heightened standard to establish patentability of substitute claims in an inter partes review over “prior art not of record but known to the patent owner.” Here, for example, the patentee’s mere...

CONVOLVE, INC. v. COMPAQ COMPUTER CORP. (Fed. Cir. 2016) (P) – Closing the gap between PTO and court claim construction standards does not substantially alter claim scope

by Steve Driskill | Feb 10, 2016 | [sub] reexamination, PTO Procedure

Amendments bridging the gap between the PTO’s broadest reasonable interpretation standard and the court’s narrower Phillips claim construction standard do not represent a substantial alteration of claim scope. Here, for example, amendments during reexamination...