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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.
MOHSENZADEH v. LEE (Fed. Cir. 2015) (P) – Patent term extension afforded to a parent application does not extend to any continuing applications
Patent term extension afforded to a parent application does not extend to any continuing applications. Here, for example, two divisional applications were found not to be entitled to the patent term adjustment in the parent application arising from the delay in...
INTERNET PATENTS CORPORATION v. ACTIVE NETWORK, INC. (Fed. Cir. 2015) (P) – The innovative mechanism for achieving abstract idea must be claimed and more than generic data collection
The “inventive concept” requirement for patent eligibility under 35 U.S.C. §101 requires that the innovative mechanism for achieving an otherwise abstract idea must be recited in the claims and must involve more than merely generic data collection. Here, for example,...
G.D. SEARLE LLC v. LUPIN PHARMACEUTICALS, INC. (Fed. Cir. 2015) (P) – Reissue cannot be used to revert an issued continuation-in-part application back to true divisional status
Reissue cannot be used to revert an issued continuation-in-part application back to true divisional status. Here, for example, a reissue application filed to revert a continuation-in-part back to a divisional application and thereby invoke safe harbor protection...
GATOR TAIL, LLC v. MUD BUDDY LLC (Fed. Cir. 2015) (NP) – Merely espousing the benefits of its own invention over the state of the art does not teach away
Merely espousing the benefits of its own invention over the state of the art is not sufficient for a prior art reference to teach away from combination with certain aspects of the state of the art. Here, for example, a short-tail mud motor with a vertically mounted...
TOMTOM, INC. v. ADOLPH (Fed. Cir. 2015) (P) – A portion of a claim preamble being a limitation does not require the entire preamble to be a limitation
The fact that a portion of a claim preamble may be interpreted as a constituting a limitation does not require that the entire preamble constitute a limitation. Here, for example, the preamble “method for [a] generating and updating data for use in [b] a destination...
TEVA PHARMACEUTICALS USA v. SANDOZ INC. (Fed. Cir. 2015) (P) – Prosecution history estoppel applies regardless of the scientific accuracy of the statements made
A statement made during prosecution may be used to define a claim term regardless of the scientific accuracy of that statement. Here, for example, in response to identical indefiniteness rejections in separate child applications regarding the claim term “molecular...
CEPHALON, INC. v. ABRAXIS BIOSCIENCE, LLC (Fed. Cir. 2015) (NP) – A definition need only be widely rather than universally accepted to form the basis for claim construction
A definition need only be widely accepted rather than universally accepted to form a proper basis for claim construction. Here, for example, although the patentee noted that the definition of the claimed “nanoparticles” and “microparticles” as being between 1 to 1000...
RICHARD WILLIAMSON v. CITRIX ONLINE, LLC (Fed. Cir. 2015) (P, en banc) – No heightened bar for overcoming presumption that a limitation without the word “means” escapes § 112, ¶ 6
Despite a decade of precedent to the contrary, the heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word “means” is not subject to § 112, ¶ 6 has been overruled. Here, for example, the claimed...
MICROSOFT CORPORATION v. PROXYCONN, INC. (Fed. Cir. 2015) (P) – Substitute claims submitted during IPR must be shown patentable over all the prior art of record
A patentee may be required to show that substitute claims submitted during IPR are patentable over the prior art of record, including prior art that was not part of the original bases of unpatentability for which review of the claims being substituted was instituted....
ARIOSA DIAGNOSTICS, INC v. SEQUENOM, INC. (Fed. Cir. 2015) (P) – The process steps themselves must be new and useful when encompassing a natural phenomenon
For process claims that encompass natural phenomenon, the process steps themselves are the additional features that must be new and useful. Here, for example, using a newly discovered source of cell-free fetal DNA (“cffDNA”) to conduct fetal screening was found to be...