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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.
PAR PHARMACEUTICAL, INC. v. TWI PHARMACEUTICALS, INC. (Fed. Cir. 2014) (P) – Inherent limitations of the prior art must be commensurate in scope with the actual limitations claimed
Inherent limitations of the prior art must be commensurate in scope with the actual limitations claimed in order to establish anticipation or obviousness. Here, for example, an inherent food effect advantage of nanosized formulations of a particular drug was found to...
VEHICLE IP, LLC v. AT&T MOBILITY, LLC (Fed. Cir. 2014) (NP) – Permissive language such as “may be” indicates that a certain feature is broader than the context described
Permissive language such as “may be” indicates that a certain feature is broader than the context in which it is described. Here, for example, the specification stated that the claimed navigational way points “may be” used as intermediate points on the route, which...
WARNER CHILCOTT COMPANY, LLC v. TEVA PHARMACEUTICALS USA, INC. (Fed. Cir. 2014) (NP) – Confirming that extrapolations from known data are operational is not sufficient to preclude obviousness
Merely confirming that extrapolations from known data are operational is not sufficient to preclude a conclusion of obviousness. Here, for example, a monthly dosing regimen in line with suggested but untested extrapolations from daily dosing regimens was found to be...
ANTARES PHARMA INC. v. MEDAC PHARMA INC. (Fed. Cir. 2014) (P) – Specification must “clearly and unequivocally” disclose invention claimed on reissue as a separate invention
The “original patent” requirement is a heightened standard compared to the separate written description requirement in that the specification must “clearly and unequivocally” disclose the particular invention claimed on reissue as a separate invention. Here, for...
MALICO, INC v. LSI LOGIC CORPORATION (Fed. Cir. 2014) (NP) – An obviousness rationale is still required when prior art is clearly capable of being modified as claimed
An obviousness rationale is required even when it is readily apparent that the prior art is physically capable of being modified to meet the limitations claimed. Here, for example, the fact that a prior art heat sink retaining device was physically capable of being...
ULTRAMERCIAL, INC. v. HULU, LLC (Fed. Cir. 2014) (P) – Addition of novel components to claimed ideas does not necessarily turn abstraction into something concrete
The addition of novel or non-routine components to a claimed idea does not necessarily turn an abstraction into something concrete for the purposes of subject matter eligibility under 35 U.S.C. § 101. Here, for example, a novel advertisement mechanism was found to be...
ROZBICKI v. CHIANG (Fed. Cir. 2014) (NP) – Claim differentiation presumptively bars interpretation if defining characteristics are in dependent claims
Claim differentiation presumptively bars a narrowing claim interpretation when its defining characteristics are recited in the dependent claims, even when the interpretation itself may not be literally recited there. Here, for example, the claimed “etching” step was...
WALKER DIGITAL, LLC v. MICROSOFT CORPORATION (Fed. Cir. 2014) (NP) – Separate claim terms will be generally construed as separate limitations
Separate claim terms will be generally construed as separate limitations. Here, for example, an “auction” for the sale of one “item” was found to still encompass multi-sale auctions because the claims did not explicitly equate the two terms as being synonymous....
AZURE NETWORKS, LLC v. CSR, PLC (Fed. Cir. 2014) (P) – Cursory inconsistencies in terminology are not sufficient to redefine a well-established term of art
Cursory inconsistencies in terminology—although not ideal—are not a strong enough suggestion that the patentee intended to redefine a well-established term of art, especially when the limitation at issue is not the actual invention itself or an otherwise critical...
WILLIAMSON v. CITRIX ONLINE, LLC (Fed. Cir. 2014) (P) – (1) Terms of mere preference such as “preferably” and “exemplary” indicate that a feature is not required & (2) the term “module” connotes either hardware or software structure and is not a nonce word per se
(1) Terms of mere preference such as “preferably” and “exemplary” may be used in the specification to indicate that a particular feature is not required. Here, for example, the disclosure of an “exemplary” display that “preferably” depicts a classroom map was found to...