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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.
DYNAMIC DRINKWARE, LLC v. NATIONAL GRAPHICS, INC. (Fed. Cir. 2015) (P) – A provisional application must also support the later filed claims to qualify as secret prior art
For a provisional application to qualify as secret prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e), it must support the claims of the application or patent asserting priority thereto. Here, for example, an otherwise anticipatory disclosure found in a...
MEDIA RIGHTS TECHNOLOGIES v. CAPITAL ONE FINANCIAL CORP (Fed. Cir. 2015) (P) – Inter-connection among components of a system is not by itself sufficient to avoid means plus function
Inter-connection among claimed components of a system is not by itself sufficient to avoid the application of § 112, ¶ 6. Here, for example, the claimed “compliance mechanism” was found to invoke application of § 112, ¶ 6 even though the specification describes how...
DOME PATENT L.P. v. LEE (Fed. Cir. 2015) (P) – Preponderance of the evidence standard is the appropriate one for assessing invalidity during reexamination
The preponderance of the evidence standard is the appropriate one for assessing invalidity during reexamination. Here, for example, the PTO found the claimed method at issue to be obvious and therefore unpatentable under a preponderance of the evidence standard even...
THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS CORPORATION (Fed. Cir. 2015) (P) – Different measurement options for a claim term may be indefinite when they produce different results
A claimed value that can be measured in several ways may be held to be indefinite rather than simply broad when the different measurements produce different results. Here, for example, a slope of strain hardening coefficient claimed within a certain range was found to...
INLINE PLASTICS CORP. v. EASYPAK, LLC (Fed. Cir. 2015) (P) – Characterization of the prior art that does not form the basis of an argued distinction is not a disclaimer
Mere characterization of the prior art that does not form the basis of an argued distinction does not rise to the level of prosecution history disclaimer. Here, for example, the patentee’s characterization of the prior art as including only a single perforation line...
PROGRESSIVE CASUALTY v. LIBERTY MUTUAL (Fed. Cir. 2015) (NP) – Disclosure of a genus does not, without more, imply written description support of a particular species
An application’s disclosure of a genus does not, without more, imply written description support of a particular species. Here, for example, a parent application’s disclosure of a “rating factor” was found to be insufficient to support a child application’s recitation...
ABT SYSTEMS, LLC v. EMERSON ELECTRIC CO. (Fed. Cir. 2015) (P) – A naturally implemented solution to a known problem is likely obvious
A naturally implemented solution to a known problem is likely obvious. Here, for example, a periodic fan cycle that starts with an ‘off’ period rather than an ‘on’ period following the deactivation of a main heating or cooling cycle was found to be “naturally...
AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. (Fed. Cir. 2015) (P, en banc) – Direct infringement can be established by user steps performed in a prescribed manner to receive a benefit
Direct infringement under § 271(a) may be established even absent a principal-agent relationship, a contractual arrangement, or a joint enterprise, when an alleged infringer conditions participation or a benefit upon performance of a step and sets the manner or timing...
POWER INTEGRATIONS, INC. v. LEE (Fed. Cir. 2015) (P) – Previous judicial interpretation of a claim term should be treated as persuasive precedent by PTO
Where the principal argument to the PTO about the proper interpretation of a claim term is consistent with a previous judicial interpretation, the PTO is obligated to acknowledge that interpretation and assess whether it is consistent with the broadest reasonable...
SUPREMA, INC. v. ITC (Fed. Cir. 2015) (P, En Banc) – Claims capturing later induced infringement may still be sufficient to support ITC exclusion order
An exclusion order from the ITC based on a violation of 19 U.S.C. § 1337(a)(1)(B)(i) may be predicated on a theory of induced infringement under 35 U.S.C. § 271(b) where direct infringement does not occur until after importation of the articles the exclusion order...