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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.
AKZO NOBEL COATINGS, INC. v. DOW CHEMICAL COMPANY (Fed. Cir. 2016) (P) – Interpretations that render some portion of the claim language superfluous are disfavored
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
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
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
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 Here, for example, no A Delay was found to be due for the time period between an initial and subsequently withdrawn restriction requirement...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”
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...
MORTGAGE GRADER, INC. v. FIRST CHOICE LOAN SERVICES (Fed. Cir. 2016) (P) – Operations that can be performed by humans without a computer are generally directed to an abstract idea
Operations that can be performed by humans without a computer are generally directed to an abstract idea despite any further recitation of computer hardware. Here, for example, a method of anonymously evaluating a potential borrower for a loan using a third-party...
ETHICON ENDO-SURGERY, INC. v. COVIDIEN LP (Fed. Cir. 2016) (P) – The same Board panel can make the decision to institute inter partes review and the final determination
Neither the AIA statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination. Background / Facts: The patent on appeal here from inter partes review proceedings at the...
IN RE URBANSKI (Fed. Cir. 2016) (P) – A proposed combination need not be operable for all of the benefits disclosed in the modified reference
A proposed combination of prior art references does not have to be operable for all of the benefits disclosed in the reference being modified. Here, for example, a prima facie case of obviousness was found to be unrebutted by a showing that certain stability benefits...
WI-LAN, INC. v. APPLE INC. (Fed. Cir. 2016) (P) – Even small differences can be sufficient to defeat infringement under the doctrine of equivalents
Even small differences in operation or design can be sufficient to defeat infringement under the doctrine of equivalents. Here, for example, a parallel architecture that inverted the order of operations for data encoding as compared to the claimed invention, and...
**YEAR IN REVIEW 2015**
As 2015 officially comes to a close, we are pleased to present our annual comprehensive guide to all the happenings in patent prosecution case law over the last year. We hope that you will find it useful as a handy reference in your practice. Digital download: Year in...