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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.
PRESIDENT & FELLOWS OF HARVARD v. LEE (Fed. Cir. 2014) (NP) – A terminal disclaimer that purports to attach to all child applications will be honored
A terminal disclaimer that purports to attach to all child applications will be honored. Here, for example, a terminal disclaimer in a parent application stating that it attaches to “any application which is entitled to the filing date of this application under 35...
WORLD CLASS TECHNOLOGY CORP v. ORMCO CORPORATION (Fed. Cir. 2014) (P) – Stated purpose of the invention may be used to construe ambiguous claim language
A stated purpose of the invention may be used to construe otherwise ambiguous claim language. Here, for example, an orthodontic device “support surface” was interpreted as being required to provide a particular type of support (during movement of a slide) in order to...
CARDSOFT, LLC v. VERIFONE, INC. (Fed. Cir. 2014) (P) – Claim terms used in same way as conventional systems will be interpreted to require all associated standard features
A claim term used in exactly the same way as in conventional systems will be interpreted to require all the standard features thereof. Here, for example, the claimed “virtual machine” was interpreted as requiring the typical limitation of conventional “virtual...
SSL SERVICES, LLC v. CITRIX SYSTEMS, INC. (Fed. Cir. 2014) (P) – Spatial or temporal proximity terms like “direct” may require a consistent interpretation of other limitations
Spatial or temporal proximity terms like “direct” may require not only a specific relationship between corresponding claim limitations, but also an interpretation of other limitations that facilitates the relationship. Here, for example, transmitting files “directly”...
IN RE TAY (Fed. Cir. 2014) (P) – Extrinsic evidence that conflicts with the intrinsic evidence is generally disfavored in claim construction
Extrinsic evidence that conflicts with the intrinsic evidence is generally disfavored in claim construction. Here, for example, extrinsic evidence relating to the typical location of a “contact” within a microprocessor was not sufficient to outweigh the...
ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED (Fed. Cir. 2014) (P) – Solely functional descriptions in specification are insufficient to link a claim element to any particular structure
Solely functional descriptions of non-well-known claim elements in the specification are not sufficient to link them to any particular structure and therefore require invocation of a means-plus-function interpretation. Here, for example, the lack of any structural...
IN RE TAYLOR MADE GOLF CO. (Fed. Cir. 2014) (NP) – Common knowledge to be considered for obviousness even if not known for invention’s specific purpose
Limitations that are common knowledge must be considered as part of the obviousness analysis even if the prior art does not disclose them for the specific purpose of the invention. Here, for example, the fact that press fitting as a means of attachment was common...
EMD MILLIPORE CORPORATION v. ALLPURE TECHNOLOGIES, INC. (Fed. Cir. 2014) (P) – Broadening amendments do not preclude prosecution history estoppel for other narrowing amendments
Broadening amendments in conjunction with narrowing amendments do not preclude the presumption that prosecution history estoppel applies. Here, for example, broadening a use requirement for a particular transfer member element did not preclude the presumption that...
AMERICAN CALCAR, INC. v. AMERICAN HONDA MOTOR CO. (Fed. Cir. 2014) (P) – Materiality for inequitable conduct applies to even state of the art obviousness references
For inequitable conduct purposes, even prior art representing the state of the art without the core inventive concept can be “but for” material if the core inventive concept is found to be obvious, and all relevant operational details (beyond mere existence alone)...
IN RE ONTJES (Fed. Cir. 2014) (NP) – Statements relating to the invention in the background section may implicate additional prior art
Statements in the specification describing the invention may nevertheless be used to more specifically define the particular problem with which the inventor is involved for analogous art purposes when those statements appear in the background section of the...