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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.
PERFECT SURGICAL TECHNIQUES v. OLYMPUS AMERICA, INC. (Fed. Cir. 2016) (P) – Reasonable diligence for antedating a reference requires only that the diligence be reasonably continuous
Reasonable diligence for antedating a prior art reference requires only that the diligence be reasonably continuous, not that attention be continuous throughout the critical period in order to be reasonable. Here, for example, a few periods of unexplained inactivity...
AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC. (Fed. Cir. 2016) (P) – Generic components working unconventionally to solve a particular technological problem is patent-eligible
Generic components working in an unconventional fashion to solve a particular technological problem is patent-eligible under § 101. Here, for example, a network accounting system that used only conventional components (e.g., “gatherers”) was found to be...
GE LIGHTING SOLUTIONS, LLC v. LIGHTS OF AMERICA, INC. (Fed. Cir. 2016) (NP) – General distinctions over the prior art do not provide objective boundaries for terms of degree
General distinctions drawn between the claimed invention and the prior art are not sufficient to provide any objective boundaries for terms of degree. Here, for example, the patentee’s argument during prosecution that prior art disk-shaped and plate-shaped heat sinks...
PROFOOT, INC. v. MERCK & CO., INC. (Fed. Cir. 2016) (NP) – Minor differences in claim language between parent and child patents do not require distinct interpretation
Minor differences in claim language between parent and child patents are not sufficient to secure a different interpretation. Here, for example, the “neutralizer” claimed in a child patent was interpreted as requiring all the components recited in the claims of a...
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION (Fed. Cir. 2016) (P) – Improvements to mental processes as opposed to computer efficacy do not qualify as an inventive concept
Improvements to mental processes as opposed to computer efficacy do not qualify as an inventive concept for establishing patent eligibility under the second step of Mayo/Alice. Here, for example, claims to an improvement in the design process for a logic circuit...
POLY-AMERICA, L.P. v. API INDUSTRIES, INC. (Fed. Cir. 2016) (P) – Disparaging a particular feature in the prior art generally constitutes a disclaimer of that feature
Disparaging a particular feature in the prior art generally constitutes a disclaimer of that feature in the claimed invention. Here, for example, a trash bag with so-called “short seals” in its upper corners was found to be limited to a design in which the short seals...
FAIRWARNING IP, LLC v. IATRIC SYSTEMS, INC. (Fed. Cir. 2016) (P) – The automation of rule-processing is an abstract idea if the improvement is the automation not the rule
The automation of rule-processing is a merely directed to an abstract idea if it is the automation rather than the rule that improves a technological process. Here, for example, claims reciting the automation of fraud and misuse detection were found to be directed to...
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. (Fed. Cir. 2016) (P, en banc) – It is not obvious to reach across fields and select an undesirable feature from a prior art reference
It is generally not obvious to reach across fields and select an admittedly undesirable feature with which to modify another prior art reference. Here, for example, no motivation to combine was found for modifying a primary reference directed to a mobile phone with a...
INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. (Fed. Cir. 2016) (P) – Novelty and non-obviousness do not alone resolve the question of inventive concept of Alice step two
Novelty and non-obviousness do not alone resolve the question of inventive concept at the second step of Mayo/Alice. Here, for example, although the prior art did not disclose the idea of “determining” and “outputting” a particular type of e-mail, these operations...
INTERTAINER, INC. v. HULU, LLC (Fed. Cir. 2016) (NP) – A functionally-described element “adapted to” perform multiple functions does not exclude multiple elements
A functionally-described element “adapted to” perform a plurality of functions does not exclude multiple elements performing those functions when no structural limitations are recited. Here, for example, a “link program” adapted to “both … interrupt streaming of the...