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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.
UNIVERSITY OF UTAH RESEARCH v. AMBRY GENETICS CORPORATION (Fed. Cir. 2014) (P) – Identifying conventional techniques for performing an abstract idea is insufficient for patent-eligibility
Identifying the techniques to be used in performing an abstract idea is insufficient to render a claim patent-eligible when those techniques are well-understood, routine, and conventional techniques. Here, for example, spelling out how to compare gene sequences using...
CSR, PLC v. SKULLCANDY, INC. (Fed. Cir. 2014) (NP) – PTO’s claim construction of disputed terms must be sufficiently explicit to enable appellate review
The PTO’s claim construction must be sufficiently explicit, at least as to any disputed claim term, in order to enable appellate review. Here, for example, the Board’s refusal to construe the term “threshold value” while nevertheless finding that the prior art did not...
PROMEGA CORP v. LIFE TECH (Fed. Cir. 2014) (P) – Open-ended limitations in the body of a claim may exceed the scope enabled by the specification
Although use of the term “comprising” in a claim preamble does not render every word and phrase in the claim open-ended, similar language attached to a particular claim limitation in the body of the claim may expand the breadth of that limitation beyond the scope...
IN RE KHAYRALLAH (Fed. Cir. 2014) (NP) – Broadest reasonable interpretation of “sub-signal” requires only slight differences between signal versions
Absent a narrowing definition in the specification, the broadest reasonable interpretation of a “sub-signal” requires only slight differences between signal versions. Here, for example, given a broad description in the specification, the claimed “sub-signal” was...
JAPANESE FOUNDATION v. LEE (Fed. Cir. 2014) (P) – Mistake by an attorney is not sufficient grounds to withdraw a terminal disclaimer
The existence of a mistake by an attorney, other than the type falling under § 255 or a lack of actual authority from a client, is not sufficient grounds to withdraw a terminal disclaimer. Here, for example, a miscommunication about the desire to file a terminal...
TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD. (Fed. Cir. 2014) (NP) – Black box element requires articulated and distinct structure for means-plus-function interpretation
Although a means-plus-function element may be illustrated in black box form, the corresponding structure must be clearly articulated in the specification—the black box itself is not sufficient—and clearly distinguished from other embodiments in order to provide...
DDR HOLDINGS, LLC v. HOTELS.COM, L.P. (Fed. Cir. 2014) (P) – Claims that overcome a problem specifically arising in the realm of computer networks are patent-eligible
In contrast to claims that are directed to “nothing more than the performance of an abstract business practice on the Internet or using a conventional computer,” claims that are “necessarily rooted in computer technology in order to overcome a problem specifically...
TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC. (Fed. Cir. 2014) (P) – Secret section 102(g) prior art may still serve as prior art under section 103
Absent the application of a statutory exception (e.g. § 103(c)), secret § 102(g) prior art may serve as prior art under § 103 for the purposes of establishing obviousness. Here, for example, the accused infringer’s prototype, which was conceived before the patented...
ERICSSON, INC. v. D-LINK SYSTEMS, INC. (Fed. Cir. 2014) (P) – Manufacturer can directly infringe apparatus claim if its system is “reasonably capable” of satisfying claim
A manufacturer can directly infringe an apparatus claim if its system or product is “reasonably capable” of satisfying the claim elements even though it may also be capable of non-infringing modes of operation. Here, for example, a Wi-Fi compliant device was found to...
TRISTRATA, INC. v. MICROSOFT CORPORATION (Fed. Cir. 2014) (NP) – A borrowed term of analogy rather than a true term of art does not have a plain and ordinary meaning
A borrowed term of analogy rather than a true term of art is not sufficient to establish a plain and ordinary meaning to one skilled in the particular field to which the application pertains. Here, for example, a “seal” described parenthetically for use in the field...