AKZO NOBEL COATINGS, INC. v. DOW CHEMICAL COMPANY (Fed. Cir. 2016) (P) – Interpretations that render some portion of the claim language superfluous are disfavored

by Steve Driskill | Jan 29, 2016 | [sub] claim context, Claim Interpretation

Interpretations that render some portion of the claim language superfluous are disfavored. Here, for example, the claimed “pressurized collection vessel” was found to require an accumulation of material rather than just receiving material in a series of pipes and heat...

AVID TECHNOLOGY, INC. v. HARMONIC, INC. (Fed. Cir. 2016) (P) – A statement disclaiming a set of features does not establish disclaimer of any one feature in isolation

by Steve Driskill | Jan 29, 2016 | [sub] prosecution history, Estoppel / Disclaimer

A statement during prosecution disclaiming a set of features in concert does not establish disclaimer of any one of those features in isolation. Here, for example, the patentee’s statement during prosecution that the claimed invention does not require a central...

INDUSTRIAL TECHNOLOGY RESEARCH v. PACIFIC BIOSCIENCES (Fed. Cir. 2016) (NP) – Common ownership of a prior art reference cannot be established by later filed assignment documents alone

by Steve Driskill | Jan 29, 2016 | [sub] common ownership, Prior Art

Common ownership of a prior art reference at the time of invention cannot be established for the purposes of disqualifying that reference under § 103(c) by later filed assignment documents alone. Here, for example, an assignment of a prior art reference that occurred...

PFIZER INC. v. LEE (Fed. Cir. 2016) (P) – Even substantive defects in notices such as restriction requirements may not toll the PTA clock

by Steve Driskill | Jan 22, 2016 | [sub] patent term adjustment, PTO Procedure

Even substantive defects in notices such as restriction requirements may not toll the clock for patent term adjustment purposes. Here, for example, no A Delay was found to be due for the time period between an initial and subsequently withdrawn restriction requirement...

CUTSFORTH, INC. v. MOTIVEPOWER, INC. (Fed. Cir. 2016) (NP) – An articulated reason for modifying a prior art element is required even for matters of “design choice”

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

An articulated reason for modifying a prior art element is required even for matters of “design choice” in order to establish a prima face case of obviousness. Here, for example, the fact that a lead receptacle could have been positioned on a mounting block and that...