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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.
MFORMATION TECHNOLOGIES, INC. v. RESEARCH IN MOTION LTD. (Fed. Cir. 2014) (P) – Separately claimed sub-limitation may be interpreted as independent of an otherwise base limitation
An express or implied order of operations may be used to infer that the operations constitute separate steps that must be completed in sequence, otherwise one of the steps would be subsumed by another and superfluous. For example, establishing a connection and...
AMERICAN RADIO LLC v. QUALCOMM INCORPORATED (Fed. Cir. 2014) (NP) – Interpretation of a claim term in accordance with its consistent use in specification is not improper
Particularly in situations where a given claim term does not have a commonly accepted plain meaning in the art to which it pertains, consistent use of the term in the written description may be sufficient to inform its meaning without improperly importing limitations...
ABBVIE INC. v. KENNEDY INST. OF RHEUMATOLOGY (Fed. Cir. 2014) (P) – Species are unpatentable over genus when skilled artisan can envision every member of the class
Although “[i]t is well-settled that a narrow species can be non-obvious and patent eligible despite a patent on its genus,” species are unpatentable when the prior art disclosures “describe the genus containing those species such that a person of ordinary skill in the...
I/P ENGINE, INC. v. AOL INC. (Fed. Cir. 2014) (NP) – Utilizing readily available information for its intended purpose is an obvious, routine step
In accordance with KSR’s mandate that “[a] person of ordinary skill is ... a person of ordinary creativity, not an automaton,” the court emphasized that “the obviousness inquiry must take account of the ‘routine steps’ that a person of ordinary skill in the art would...
APOTEX INC. v. UCB, INC. (Fed. Cir. 2014) (P) – Manipulatively withholding information from an expert making a declaration is inequitable conduct
Although “[t]here is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art,” it is inequitable misconduct to “affirmatively and knowingly misrepresent[] material facts regarding the prior art.” In particular,...
GAMMINO v. SPRINT COMMUNICATIONS COMPANY (Fed. Cir. 2014) (NP) – Prosecution statements characterizing all elements of a set preclude enforcement against a subset
Repeated and unqualified statements in the prosecution history that the claimed invention treats all elements of a set in a certain manner may preclude enforcement against a system that selectively operates on a subset of those elements. For example, as here, stating...
IN RE INDEX SYSTEMS, INC. (Fed. Cir. 2014) (NP) – Market pressure may render each of a set of finite solutions obvious to try
When there is “a design need or market pressure to solve a problem” and there are only “a finite number of identified, predictable solutions to that problem,” all such solutions are likely obvious under an obvious-to-try rationale. For example, when there is a...
ALBECKER v. CONTOUR PRODUCTS, INC. (FL) (Fed. Cir. 2014) (NP) – Use of disjunctive “or” in describing set of features may imply that the features are alternatives
Use of a disjunctive “or” in describing a set of features may be used to infer that the features are alternatives to one another. Although this may not be sufficient to establish that such alternatives are mutually exclusive in a given embodiment, it may imply that...
SCRIPTPRO, LLC v. INNOVATION ASSOCIATES (Fed. Cir. 2014) (P) – Qualifiers such as “generally” or “broadly” may avoid inference that a list of features is essential
Although the inclusion of truly essential features may be required for a claim to satisfy the written description requirement, the court acknowledged that “[i]t is common, and often permissible, for particular claims to pick out a subset of the full range of described...
AMDOCS LIMITED v. OPENET TELECOM, INC. (Fed. Cir. 2014) (P) – Universal and advantageous embodiment features may be read Into related claim terms
Although limitations from the specification should not ordinarily be imported into the claims, “the embodiments define the outer limits of the claim term.” Thus, when a certain feature is present in all the embodiments and touted as advantageous, it may be reasonably...