DRIESSEN v. SONY MUSIC ENTERTAINMENT (Fed. Cir. 2016) (NP) – The term “storing” requires not only holding an object but also putting it into storage in the first place

by Steve Driskill | Feb 10, 2016 | [sub] common terms, Claim Interpretation

Unless dictated otherwise by context, the term “storing” requires not only holding an object but also putting it into storage in the first place. Here, for example, means for “storing” a record on or in a physical medium was found to require a structure for not only...

SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION (Fed. Cir. 2016) (P) – A final IPR decision need not address claims raised in the original petition but denied review

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

A final decision in inter partes review (IPR) need not address claims raised in the original petition but denied review. Here, for example, the Board’s final decision was found to be proper even though it addressed only the claims as to which review was granted and...

TRIVASCULAR, INC. v. SAMUELS (Fed. Cir. 2016) (P) – Arguments during prosecution about ultimately discarded amendments do not constitute disclaimer

by Steve Driskill | Feb 5, 2016 | [sub] prosecution history, Estoppel / Disclaimer

Arguments concerning an amendment proposed during prosecution but not ultimately part of the issued claims do not rise to the level of prosecution history disclaimer. Here, for example, the patentee’s initial arguments and amendments clarifying that the claimed...

TRUSTEES OF COLUMBIA UNIV. v. SYMANTEC CORPORATION (Fed. Cir. 2016) (P) – Inconsistent terminology may render claims indefinite when the claims rely on a minority interpretation

by Steve Driskill | Feb 2, 2016 | [sub] consistency, Claim Interpretation

Inconsistent terminology in the specification may render claims indefinite when the claims rely on a minority interpretation. Here, for example, because the claimed “byte sequence feature” is predominantly described in the specification as referring to the machine...

PURDUE PHARMA L.P. v. EPIC PHARMA, LLC (Fed. Cir. 2016) (P) – Process limitations having no effect on a claimed composition will not be given patentable weight

by Steve Driskill | Feb 1, 2016 | [sub] product-by-process, Claim Interpretation

Process limitations in a claimed composition having no effect on the structure of the claimed composition will not be given patentable weight. Here, for example, a claim limitation specifying that a particular impurity in the pharmaceutical composition being claimed...