CSR, PLC v. SKULLCANDY, INC. (Fed. Cir. 2014) (NP) – PTO’s claim construction of disputed terms must be sufficiently explicit to enable appellate review

by Steve Driskill | Dec 16, 2014 | [sub] appellate, PTO Procedure

The PTO’s claim construction must be sufficiently explicit, at least as to any disputed claim term, in order to enable appellate review. Here, for example, the Board’s refusal to construe the term “threshold value” while nevertheless finding that the prior art did not...

JAPANESE FOUNDATION v. LEE (Fed. Cir. 2014) (P) – Mistake by an attorney is not sufficient grounds to withdraw a terminal disclaimer

by Steve Driskill | Dec 9, 2014 | [sub] terminal disclaimer, PTO Procedure

The existence of a mistake by an attorney, other than the type falling under § 255 or a lack of actual authority from a client, is not sufficient grounds to withdraw a terminal disclaimer. Here, for example, a miscommunication about the desire to file a terminal...

PRESIDENT & FELLOWS OF HARVARD v. LEE (Fed. Cir. 2014) (NP) – A terminal disclaimer that purports to attach to all child applications will be honored

by Steve Driskill | Oct 29, 2014 | [sub] obviousness-type, [sub] terminal disclaimer, Double Patenting, PTO Procedure

A terminal disclaimer that purports to attach to all child applications will be honored. Here, for example, a terminal disclaimer in a parent application stating that it attaches to “any application which is entitled to the filing date of this application under 35...

ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. (Fed. Cir. 2014) (NP) – Tangential acknowledgment of a given issue by the board is not sufficient to avoid waiver

by Steve Driskill | Aug 29, 2014 | [sub] appellate, PTO Procedure

Simply prompting the Board during an appeal to acknowledge a given issue in responding to arguments for a fundamentally separate issue is not sufficient to preserve the first issue for further appellate proceedings. In order to make sure that the issue is preserved,...

IN RE DINSMORE (Fed. Cir. 2014) (P) – Terminal disclaimers not generally rescindable via reissue

by Steve Driskill | Jun 10, 2014 | [sub] reissue, PTO Procedure

Although the court specifically noted that it “need not address broader questions about the intersection of reissue standards and terminal disclaimers,” at least in cases as here where an applicant knowingly and intentionally files a terminal disclaimer for patents...

Q. I. PRESS CONTROLS v. LEE (Fed. Cir. 2014) (P) – Proactive arguments against non-asserted rejections on appeal

by Steve Driskill | Jun 9, 2014 | [sub] appellate, PTO Procedure

The Board has been encouraged here by the Federal Circuit to review the examiner’s rejections for consistency and make independent rejections based at least on the art before it where appropriate. Depending on how this plays out, it may make sense to proactively argue...