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These articles are for informational purposes, and are not intended to constitute legal advice. These articles are only the opinion of the authors and are not attributable to Muncy, Geissler, Olds & Lowe, P.C., or the firm’s clients.
ACCO BRANDS CORPORATION v. FELLOWES, INC. (Fed. Cir. 2016) (P) – It is generally obvious to try any of a finite number of arrangements of prior art elements
It is generally obvious to try any of a finite number of arrangements of prior art elements even if a subset of those arrangements fall outside of the claim scope at issue. Here, for example, the fact that there were only two feasible arrangements of two sensors...
THE OHIO WILLOW WOOD COMPANY v. ALPS SOUTH, LLC (Fed. Cir. 2016) (P) – Withholding information that directly counters arguments before the PTO constitutes inequitable conduct
Withholding information that runs directly counter to your central arguments before the PTO constitutes inequitable conduct. Here, for example, withholding earlier letters from a competitor’s in-house counsel that would have corroborated a declaration from the...
SECURE WEB CONFERENCE CORP. v. MICROSOFT CORPORATION (Fed. Cir. 2016) (NP) – Touting a characteristic of a claimed feature as advantageous without counterexamples renders it essential
Repeatedly touting a particular characteristic of a claimed feature as being advantageous without providing any broader embodiments reinforces that characteristic as essential. Here, for example, a “security device” was found to be limited to a stand-alone device that...
NIKE, INC. v. ADIDAS AG (Fed. Cir. 2016) (P) – No heightened standard to establish patentability of IPR substitute claims over prior art not of record
Absent an allegation of conduct violating the duty of candor, there is no heightened standard to establish patentability of substitute claims in an inter partes review over “prior art not of record but known to the patent owner.” Here, for example, the patentee’s mere...
CONVOLVE, INC. v. COMPAQ COMPUTER CORP. (Fed. Cir. 2016) (P) – Closing the gap between PTO and court claim construction standards does not substantially alter claim scope
Amendments bridging the gap between the PTO’s broadest reasonable interpretation standard and the court’s narrower Phillips claim construction standard do not represent a substantial alteration of claim scope. Here, for example, amendments during reexamination...
DRIESSEN v. SONY MUSIC ENTERTAINMENT (Fed. Cir. 2016) (NP) – The term “storing” requires not only holding an object but also putting it into storage in the first place
Unless dictated otherwise by context, the term “storing” requires not only holding an object but also putting it into storage in the first place. Here, for example, means for “storing” a record on or in a physical medium was found to require a structure for not only...
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION (Fed. Cir. 2016) (P) – A final IPR decision need not address claims raised in the original petition but denied review
A final decision in inter partes review (IPR) need not address claims raised in the original petition but denied review. Here, for example, the Board’s final decision was found to be proper even though it addressed only the claims as to which review was granted and...
TRIVASCULAR, INC. v. SAMUELS (Fed. Cir. 2016) (P) – Arguments during prosecution about ultimately discarded amendments do not constitute disclaimer
Arguments concerning an amendment proposed during prosecution but not ultimately part of the issued claims do not rise to the level of prosecution history disclaimer. Here, for example, the patentee’s initial arguments and amendments clarifying that the claimed...
TRUSTEES OF COLUMBIA UNIV. v. SYMANTEC CORPORATION (Fed. Cir. 2016) (P) – Inconsistent terminology may render claims indefinite when the claims rely on a minority interpretation
Inconsistent terminology in the specification may render claims indefinite when the claims rely on a minority interpretation. Here, for example, because the claimed “byte sequence feature” is predominantly described in the specification as referring to the machine...
PURDUE PHARMA L.P. v. EPIC PHARMA, LLC (Fed. Cir. 2016) (P) – Process limitations having no effect on a claimed composition will not be given patentable weight
Process limitations in a claimed composition having no effect on the structure of the claimed composition will not be given patentable weight. Here, for example, a claim limitation specifying that a particular impurity in the pharmaceutical composition being claimed...