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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.
PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC. (Fed. Cir. 2015) (P) – A claim preamble can be limiting even when it only breathes life into a dependent claim
A claim preamble can be limiting of that claim even when it only breathes life into another claim dependent thereon. Here, for example, a “repetitive motion pacing system” as recited in the preamble of an independent claim was found to be limiting of that independent...
FENNER INVESTMENTS, LTD. v. CELLCO PARTNERSHIP (Fed. Cir. 2015) (P) – Statements during prosecution are relevant to claim interpretation even when not relied on by the examiner
A patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation. Here, for example, statements on the record that a “personal identification number” distinguishes over the prior art by being user- rather than...
IN RE CHUANG (Fed. Cir. 2015) (NP) – Prior art must “criticize or otherwise discourage” use of the claimed invention in order to teach away
In order for a prior art reference to teach away from the claimed invention, it must criticize or otherwise discourage use of the claimed invention rather than merely provide an alternative. Here, for example, a reference’s mere emphasis that the absence of due dates...
LEXINGTON LUMINANCE LLC v. AMAZON.COM INC. (Fed. Cir. 2015) (NP) – Open Markush group may be interpreted as definite closed group when the intrinsic record is reasonably clear
Even an otherwise improper open Markush group may be interpreted as a definite closed group when the intrinsic record is reasonably clear in indicating what the claim intended to cover. Here, for example, a semiconductor substrate claimed as being “selected from the...
FENF, LLC v. SMARTTHINGZ, INC. (Fed. Cir. 2015) (NP) – Differentiation among claims can prevent restrictions on one claim term from being applied to other terms
Differentiation among the claims can serve to counter an inference that restrictions on one claim term should be applied to other claim terms. Here, for example, “posts” and “separators” were found to be sufficiently distinct elements based on their inclusion in...
IN RE CUOZZO SPEED TECHNOLOGIES, LLC (Fed. Cir. 2015) (P) – PTO’s decision whether to institute Inter Partes Review (IPR) is not appealable to the Federal Circuit
The PTO’s decision whether or not to institute Inter Partes Review (IPR) is not appealable to the Federal Circuit. Here, for example, the Federal Circuit found that it lacked jurisdiction to review the PTO’s decision to institute IPR, even after a final decision....
PAPST LICENSING v. FUJIFILM CORPORATION (Fed. Cir. 2015) (P) – A claim term’s interpretation should not be irrelevant to the invention’s advance over the prior art
It is generally improper to impose requirements on claim terms that are foreign to what the specification describes as the invention’s relevant advance over the prior art. Here, for example, it was found to be improper to require the claimed “virtual” files to be...
IN RE IMES (Fed. Cir. 2015) (P) – Broadest reasonable interpretation rubric cannot focus solely on a literal interpretation of claim terms
The broadest reasonable interpretation rubric employed by the PTO cannot ignore characteristic features of claim terms in favor of a purely literal interpretation of those terms. Here, for example, the broadest reasonable interpretation of a “wireless” communication...
PLAS-PAK INDUSTRIES v. SULZER MIXPAC AG (Fed. Cir. 2015) (NP) – A reference’s specific contribution to the art may be used to characterize its “principle of operation”
A reference’s specific contribution to the art beyond its more conventional features may be used to characterize its “principle of operation” in considering whether such functionality would be preserved by an otherwise obvious modification. Here, for example, a...
IN RE ORBITAL TECHNOLOGIES CORP. (Fed. Cir. 2015) (NP) – Machine translation of a foreign reference is adequate for simple technologies with straightforward figures
A machine translation of a foreign language reference may be deemed adequate evidence of the reference’s content for simple technologies with straightforward figures. Here, for example, a machine translation of a Japanese reference directed to lighting for marine...