PERFECT SURGICAL TECHNIQUES v. OLYMPUS AMERICA, INC. (Fed. Cir. 2016) (P) – Reasonable diligence for antedating a reference requires only that the diligence be reasonably continuous

by | Nov 15, 2016 | [sub] diligence, Inventorship

Reasonable diligence for antedating a prior art reference requires only that the diligence be reasonably continuous, not that attention be continuous throughout the critical period in order to be reasonable. Here, for example, a few periods of unexplained inactivity...

AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC. (Fed. Cir. 2016) (P) – Generic components working unconventionally to solve a particular technological problem is patent-eligible

by | Nov 1, 2016 | [sub] Alice step two, Subject Matter Eligibility

Generic components working in an unconventional fashion to solve a particular technological problem is patent-eligible under § 101. Here, for example, a network accounting system that used only conventional components (e.g., “gatherers”) was found to be...

GE LIGHTING SOLUTIONS, LLC v. LIGHTS OF AMERICA, INC. (Fed. Cir. 2016) (NP) – General distinctions over the prior art do not provide objective boundaries for terms of degree

by | Oct 27, 2016 | [sub] clarity, Indefiniteness

General distinctions drawn between the claimed invention and the prior art are not sufficient to provide any objective boundaries for terms of degree. Here, for example, the patentee’s argument during prosecution that prior art disk-shaped and plate-shaped heat sinks...

PROFOOT, INC. v. MERCK & CO., INC. (Fed. Cir. 2016) (NP) – Minor differences in claim language between parent and child patents do not require distinct interpretation

by | Oct 27, 2016 | [sub] prosecution history, Estoppel / Disclaimer

Minor differences in claim language between parent and child patents are not sufficient to secure a different interpretation. Here, for example, the “neutralizer” claimed in a child patent was interpreted as requiring all the components recited in the claims of a...

SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION (Fed. Cir. 2016) (P) – Improvements to mental processes as opposed to computer efficacy do not qualify as an inventive concept

by | Oct 17, 2016 | [sub] Alice step two, Subject Matter Eligibility

Improvements to mental processes as opposed to computer efficacy do not qualify as an inventive concept for establishing patent eligibility under the second step of Mayo/Alice. Here, for example, claims to an improvement in the design process for a logic circuit...