Blog
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.
MCM PORTFOLIO LLC v. HEWLETT-PACKARD COMPANY (Fed. Cir. 2015) (P) – Inter partes review (IPR) does not violate Article III or the Seventh Amendment of the U.S. Constitution
The IPR system is a viable administrative procedure in so far as it does not violate Article III or the Seventh Amendment of the U.S. Constitution. Background / Facts: The patent on appeal here from rejection at the PTO during inter partes review (IPR) proceedings is...
STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. (Fed. Cir. 2015) (P) – Unambiguous plain meaning of a claim limitation is controlling over other descriptions in the specification
Absent clear redefinition or disavowal, the plain meaning of a claim limitation will be controlling over other descriptions in the specification when the plain meaning is unambiguous. Here, for example, a “query” concerning the online status of other network devices...
IN RE COMMONWEALTH SCIENTIFIC (Fed. Cir. 2015) (NP) – An applicant’s prosecution strategy does not bar claims that are otherwise permissible under § 135(b)(1)
An applicant’s prosecution strategy does not bar claims provoking an interference that are otherwise permissible under § 135(b)(1). Here, for example, claims copied from another patent before the critical date in § 135(b)(1) but then canceled and only added-back five...
CIOFFI v. GOOGLE, INC. (Fed. Cir. 2015) (NP) – Claim differentiation applies on a limitation-by-limitation basis
Claim differentiation applies on a limitation-by-limitation basis and is not vitiated by the inclusion of additional limitations in the differentiating claim. Here, for example, a dependent claim specifying that a “web browser process” is capable of “direct” access to...
AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. (Fed. Cir. 2015) (P) – Selection of an “optimal” element is not necessarily limited to the single best such element
While context dependent, selection of an “optimal” element is not necessarily limited to the single best such element. Here, for example, selection of “an optimal server” was found to include several potentially optimal servers from which content may be retrieved...
INPHI CORPORATION v. NETLIST, INC. (Fed. Cir. 2015) (P) – A negative limitation is supported by a description of alternative features without articulating advantages
Negative claim limitations may be supported by the specification’s description of alternative features—even without articulating advantages or disadvantages of each feature—which can constitute a “reason to exclude” under the standard for supporting negative...
CUBIST PHARMACEUTICALS, INC. v. HOSPIRA, INC. (Fed. Cir. 2015) (P) – A certificate of correction may be used to correct a chemical structure based on later discoveries
A certificate of correction may be used to correct the chemical structure of a claimed compound based on later discoveries when the specification as a whole makes clear that the patentee nevertheless possessed the compound at the time of filing. Here, for example, the...
ADVANCED STEEL RECOVERY, LLC v. X-BODY EQUIPMENT, INC. (Fed. Cir. 2015) (P) – The location term “end” is limited to the region at or near where a corresponding structure ceases to exist
The location term “end” is generally limited to the region at or near where a corresponding structure ceases to exist. Here, for example, while the claim term “proximate end” was found to encompass some offset from the absolute end of a corresponding shipping...
PROMETHEUS LABORATORIES, INC. v. ROXANE LABORATORIES, INC. (Fed. Cir. 2015) (P) – It is obvious to treat a subset of patients with an otherwise known procedure without unexpected results
It is generally obvious to treat a limited subset of patients with an otherwise known procedure when there are no unexpected results directly attributable to the patient subset itself. Here, for example, limiting the patient pool for a drug treating irritable bowel...
IMAGINAL SYSTEMATIC, LLC v. LEGGETT & PLATT, INC. (Fed. Cir. 2015) (P) – Negative claim limitations will be interpreted just as broadly as positive claim limitations
Negative claim limitations will be interpreted just as broadly as positive claim limitations, which may significantly narrow the claim scope. Here, for example, method steps required to be performed “without the use of a vision guidance system” were found to exclude a...