SIGHTSOUND TECHNOLOGIES, LLC v. APPLE INC. (Fed. Cir. 2015) (P) – Electronic sales are a financial activity that is subject to CBM review

by Steve Driskill | Dec 15, 2015 | [sub] covered business methods, PTO Procedure

The electronic sale of something, including charging a fee to a party’s account, is a financial activity that is subject to Covered Business Method (CBM) review. Here, for example, the sale of digital audio and video signals for a fee through telecommunications lines...

OPENWAVE SYSTEMS, INC. v. APPLE INC. (Fed. Cir. 2015) (P) – Disparaged combinations in the specification will be generally found to be disclaimed from the claim scope

by Steve Driskill | Dec 15, 2015 | [sub] specification, Estoppel / Disclaimer

Any combination that is thoroughly disparaged in the specification will be generally found to be disclaimed from the ultimate claim scope. Here, for example, the fact that the specification was rife with remarks that disparage more complex mobile devices incorporating...

PROLITEC, INC. v. SCENTAIR TECHNOLOGIES, INC. (Fed. Cir. 2015) (P) – Proposed amendments during IPR must establish patentability over prior art from original prosecution

by Steve Driskill | Dec 4, 2015 | [sub] inter partes review, PTO Procedure

A patentee’s burden on a motion to amend its claims during IPR includes the burden to show patentability over prior art from the patent’s original prosecution history. Here, for example, the patentee’s motion to amend was denied because it did not address the...

CARDSOFT, LLC v. VERIFONE INC. (Fed. Cir. 2015) (P) – Claim terms used in same way as conventional systems will be interpreted to require all associated standard features

by Steve Driskill | Dec 2, 2015 | [sub] extrinsic evidence, Claim Interpretation

A claim term used in exactly the same way as in conventional systems will be interpreted to require all the standard features thereof. Here, for example, the claimed “virtual machine” was interpreted as requiring the typical limitation of conventional “virtual...

IN RE HILL-ROM SERVICES, INC. (Fed. Cir. 2015) (NP) – A challenge to a Board decision as constituting a “new ground of rejection” must be raised in rehearing

by Steve Driskill | Dec 2, 2015 | [sub] appellate, PTO Procedure

The PTO’s rule requiring that any challenge to a Board decision as constituting a “new ground of rejection” must be raised in a request for rehearing to preserve it for review by the court system is not unreasonable and is in accordance with the principles of...