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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.
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. (Fed. Cir. 2015) (P) – Timeliness and relevancy alone are not sufficient to ensure entry of supplemental information for IPR
Timeliness and relevancy alone are not sufficient to ensure entry under 37 C.F.R. § 42.123(a) of supplemental information for IPR proceedings where the information reasonably could have been submitted with the IPR petition itself. Here, for example, the later...
VEHICLE INTELLIGENCE v. MERCEDES-BENZ USA, LLC (Fed. Cir. 2015) (NP) – The use of special-purpose hardware without implementation details is not sufficient for patent eligibility
The mere use of special-purpose hardware without providing implementation details is not sufficient to transform an otherwise abstract idea into patent eligible subject matter. Here, for example, although the court acknowledged that execution of a vehicle operator...
SOUTH ALABAMA MEDICAL SCIENCE v. GNOSIS S.P.A. (Fed. Cir. 2015) (P) – No nexus is required between the claimed invention and a product ultimately produced under license
The patentee need not necessarily establish an independent nexus between the products produced under a license agreement and the claimed invention for licensing activity to be a relevant secondary factor in the obviousness inquiry. Here, for example, the fact that the...
MERCK & CIE v. GNOSIS S.P.A. (Fed. Cir. 2015) (P) – The teachings of a later prior art reference outweigh contradictory statements in an earlier reference
The teachings of a later prior art reference generally outweigh contradictory statements in an earlier prior art reference. Here, for example, although an earlier prior art reference clearly taught away from the claimed invention by stating that the claimed “5-MTHF”...
IN RE DISTEFANO (Fed. Cir. 2015) (P) – Origin identification does not constitute printed matter under the printed matter doctrine
Unless claimed directly, origin identification does not constitute printed matter under the printed matter doctrine. Here, for example, the origin of certain web design code snippets (or “assets”) recited as being “authored by third party authors” was found not to...
SIGHTSOUND TECHNOLOGIES, LLC v. APPLE INC. (Fed. Cir. 2015) (P) – Electronic sales are a financial activity that is subject to CBM review
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
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
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
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
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...