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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.
ORACLE AMERICA, INC. v. GOOGLE, INC. (Fed. Cir. 2015) (NP) – Broadest reasonable interpretation cannot be inconsistent with proper operation of the disclosed embodiments
A broadest reasonable interpretation asserted by the PTO cannot be inconsistent with proper operation of the embodiments disclosed in the specification. Here, for example, because the specification made clear that a new instruction must replace another instruction at...
SENJU PHARMACEUTICAL CO. v. LUPIN LIMITED (Fed. Cir. 2015) (P) – Even statistically insignificant relationships in the prior art establish that the relationship was known
Even statistically insignificant relationships disclosed in the prior art can be relied on for establishing that the relationship was known. Here, for example, a prior art document showing effectively no change in permeability was found to contain sufficient data for...
IN RE HITACHI METALS, LTD. (Fed. Cir. 2015) (NP) – The specification may be used to infer correct claim scope of a patent for obviousness-type double patenting
Although the specification of an earlier patent may not be used as prior art in establishing obviousness-type double patenting of a later patent or application, it may nevertheless be used to infer the correct scope of the earlier patent’s claims for comparison...
MOBILEMEDIA IDEAS LLC v. APPLE INC. (Fed. Cir. 2015) (P) – Combining references may be improper when there is substantial interplay among the claimed components
Combining prior art references for the purpose of establishing obviousness may be improper when there is substantial interplay among the claimed components. Here, for example, integrating a first reference’s microprocessor to control the camera of a second reference’s...
ENZO BIOCHEM INC. v. APPLERA CORP. (Fed. Cir. 2015) (P) – The term “component” requires that other components be part of the larger system
The term “component” requires that other components be part of the larger system. Here, for example, a compound claimed as “represent[ing] at least one component of a signalling moiety” was found to exclude single-entity moiety arrangements. “[T]he term ‘component’ in...
VICOR CORPORATION v. SYNQOR, INC. (Fed. Cir. 2015) (NP) – “Detailed particularity” for incorporating material into prior art shown by mentioning incorporated features
The “detailed particularity” required for incorporation of material into a prior art document can be shown by the prior art document mentioning features disclosed only in the incorporated material itself. Here, for example, a “capacitance-multiplying converter” absent...
EIDOS DISPLAY, LLC v. AU OPTRONICS CORPORATION (Fed. Cir. 2015) (P) – Otherwise indefinite ambiguities may be resolved based on the understanding of one skilled in the art
Ambiguities in the plain language of the claims may be resolved rather than held indefinite by taking into account how a person of ordinary skill in the art at the time of the invention would have understood the limitation at issue after reading the intrinsic record....
IN RE SINGHAL (Fed. Cir. 2015) (NP) – The scope of analogous art is not defined by an inventor’s subjective perspective
The scope of analogous art is not defined by an inventor’s subjective perspective. Here, for example, although the inventor was specifically focused on using two-way communication satellites to monitor a driver’s mental state, more general prior art directed to...
GILEAD SCIENCES, INC. v. LEE (Fed. Cir. 2015) (P) – A supplemental document filed after a reply constitutes an unreasonable delay for PTA adjustment
Filing a supplemental document after submitting a reply constitutes an unreasonable delay by the applicant for the purposes of PTA adjustment. Here, for example, the filing of a supplemental IDS after submitting a reply to an initial restriction requirement was found...
INTERDIGITAL v. ITC (Fed. Cir. 2015) (NP) – Definitive terms such as “always” designate the corresponding characteristic as universal to the invention
Use of definitive terms such as “always” indicates that the corresponding characteristic is universal to the invention. Here, for example, the claimed “power control bit” was found to be limited to a single-bit power control command because the specification described...