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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.
IN RE TAYLOR (Fed. Cir. 2015) (NP) – A claimed correlation between a claim feature and a performance property does not carry patentable weight
A limitation that only recites a correlation between a claim feature and a performance property does not carry any patentable weight. Here, for example, a “weight concentration ratio” claimed as being selected to correlate with how damaging the resulting solution is...
BELDEN INC. v. BERK-TEK LLC (Fed. Cir. 2015) (P) – Motivation to combine prior art references is not negated by a clash in otherwise inconsequential aspects
Motivation to combine two prior art references is not negated by a clash in inventive aspects that are inconsequential to the problem addressed by the proposed combination. Here, for example, differences in wire configurations (insulated vs. bare) was found to be...
ATLAS IP, LLC v. ST. JUDE MEDICAL, INC. (Fed. Cir. 2015) (P) – Soft language such as “approximately” can provide wiggle room for different modes of operation
Soft language such as “approximately” can provide wiggle room for different modes of operation. Here, for example, the claimed communication cycle invention was not found to be inoperable without the hub sending start-time information to a remote device before each...
ATLAS IP, LLC v. MEDTRONIC, INC. (Fed. Cir. 2015) (P) – Imprecisions about plurals and conjunctions found in the claim language should be resolved by context
Imprecisions about plurals and conjunctions found in the claim language should be resolved by context. Here, for example, a hub / remote device communication cycle having “intervals during which the hub and the remotes transmit and receive frames” was found to...
IN RE MORSA (Fed. Cir. 2015) (P) – High level of ordinary skill asserted in the specification may lower the bar for enablement of the prior art
Statements in the specification asserting a high level of skill in the art may be used to lower the bar for enablement of the prior art as well as the application itself. Here, for example, even high-level descriptions in a prior art press release about “us[ing] the...
SPECTRUM PHARMACEUTICALS, INC v. SANDOZ INC. (Fed. Cir. 2015) (P) – A less-than-pure material is generally obvious over a corresponding pure material
Absent any unexpected advantages, a less-than-pure material in terms of the active component is an obvious variant of a corresponding pure material. Here, for example, the claimed “substantially pure” pharmaceutical compound that was 92–95% pure material was found to...
IN RE STEED (Fed. Cir. 2015) (P) – No new evidence may be generally submitted on appeal at the PTO that was not before the primary examiner
Absent a recent decision of either the Board or a court, no new evidence may be submitted on appeal at the PTO that was not before the primary examiner. Here, for example, the applicant’s introduction only during the Board hearing of affidavits in support of a Rule...
SHIRE LLC v. AMNEAL PHARMACEUTICALS, LLC (Fed. Cir. 2015) (P) – The prior art must “teach a finite and limited class” that includes the compound claimed
For a broad reference to be considered as disclosing a particular chemical compound for prior art purposes, it must “teach a finite and limited class” that includes the compound claimed. Here, for example, a compound representing the active ingredient in a claimed...
SUMMIT 6, LLC v. SAMSUNG ELECTRONICS CO., LTD. (Fed. Cir. 2015) (P) – An element described as “being provided” in a particular way may not require a separate method step
A claim limitation describing a previously recited element as “being provided” in a particular way may be interpreted as a characteristic of that element rather than a separate method step. Here, for example, a “pre-processing” step at a client device in accordance...
SUPREMA, INC. v. ITC (Fed. Cir. 2015) (NP) – Failure to investigate similar patent discovered during review of another patent may show willful blindness
Willful blindness for establishing induced infringement under § 271(b) may be shown by a deliberate failure to further investigate a patent discovered during review of another patent and having similarities in content, inventorship, and ownership. Here, for example,...