IN RE CUOZZO SPEED TECHNOLOGIES, LLC (Fed. Cir. 2015) (P) – PTO’s decision whether to institute Inter Partes Review (IPR) is not appealable to the Federal Circuit

by | Feb 4, 2015 | [sub] overlapping jurisdiction, PTO Procedure

The PTO’s decision whether or not to institute Inter Partes Review (IPR) is not appealable to the Federal Circuit. Here, for example, the Federal Circuit found that it lacked jurisdiction to review the PTO’s decision to institute IPR, even after a final decision....

PAPST LICENSING v. FUJIFILM CORPORATION (Fed. Cir. 2015) (P) – A claim term’s interpretation should not be irrelevant to the invention’s advance over the prior art

by | Feb 2, 2015 | [sub] consistency, Claim Interpretation

It is generally improper to impose requirements on claim terms that are foreign to what the specification describes as the invention’s relevant advance over the prior art. Here, for example, it was found to be improper to require the claimed “virtual” files to be...

IN RE IMES (Fed. Cir. 2015) (P) – Broadest reasonable interpretation rubric cannot focus solely on a literal interpretation of claim terms

by | Jan 29, 2015 | [sub] broadest reasonable interpretation, Claim Interpretation

The broadest reasonable interpretation rubric employed by the PTO cannot ignore characteristic features of claim terms in favor of a purely literal interpretation of those terms. Here, for example, the broadest reasonable interpretation of a “wireless” communication...

PLAS-PAK INDUSTRIES v. SULZER MIXPAC AG (Fed. Cir. 2015) (NP) – A reference’s specific contribution to the art may be used to characterize its “principle of operation”

by | Jan 27, 2015 | [sub] motivation, Obviousness

A reference’s specific contribution to the art beyond its more conventional features may be used to characterize its “principle of operation” in considering whether such functionality would be preserved by an otherwise obvious modification. Here, for example, a...

IN RE ORBITAL TECHNOLOGIES CORP. (Fed. Cir. 2015) (NP) – Machine translation of a foreign reference is adequate for simple technologies with straightforward figures

by | Jan 20, 2015 | [sub] foreign references, Prior Art

A machine translation of a foreign language reference may be deemed adequate evidence of the reference’s content for simple technologies with straightforward figures. Here, for example, a machine translation of a Japanese reference directed to lighting for marine...