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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.
IN RE KARPF (Fed. Cir. 2014) (NP) – Silence in the prior art is not sufficient to show anticipation without inherency
Silence in the prior art is not sufficient to sustain a rejection on the grounds of anticipation without inherency, which requires more than the mere possibility or even probability that the feature at issue is contemplated. Background / Facts: The application on...
IN RE RAJEN PATEL (Fed. Cir. 2014) (NP) – Proximity alone between non-overlapping ranges is not enough to establish obviousness
A rejection “based on ranges approaching each other” is not appropriate without “a teaching in the prior art that the end points of the prior art range are approximate, or can be flexibly applied.” Where “differences clearly exist and there is no evidence that they...
GOLDEN BRIDGE TECHNOLOGY v. APPLE INC. (Fed. Cir. 2014) (P) – Submission of applicant’s own or acquiesced remarks in an IDS may constitute disclaimer
In general, although the “mere disclosure of potentially material prior art to the [PTO] does not automatically limit the claimed invention,” “an applicant’s remarks submitted with an [IDS] can be the basis for limiting claim scope.” In particular, as here,...
H-W TECHNOLOGY, L.C. v. OVERSTOCK.COM, INC. (Fed. Cir. 2014) (P) – “User” does not encompass inanimate objects
Unless the specification explicitly states otherwise, a “user” will most likely be limited to human consumers and not encompass inanimate objects (e.g., smartphone apps performing background operations). Background / Facts: The patent being asserted here is directed...
DIGITECH IMAGE TECHNOLOGIES v. ELECTRONICS FOR IMAGING, INC. (Fed. Cir. 2014) (P) – Manipulating existing information to generate additional information is not by itself patentable
“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Tying the manipulation to an underlying data structure—even one that is technological in...
X2Y ATTENUATORS, LLC v. ITC (Fed. Cir. 2014) (P) – Labeling certain features as “essential” or “universal” to all embodiments constitutes disavowal
A statement directly or indirectly incorporated into the specification that the presence of a particular feature is “universal to all the embodiments” or is “an essential element among all embodiments or connotations of the invention” constitutes a clear and...
ABBVIE DEUTSCHLAND GMBH & CO. v. JANSSEN BIOTECH, INC. (Fed. Cir. 2014) (P) – Representative species must be diverse when relied upon to satisfy written description of broader genus
Absent any structural features common to the members of a claimed genus, the specification must disclose representative species that are diverse across the breadth of the claimed genus in order to satisfy the written description requirement. “[A]nalogizing the genus...
SOUTHERN SNOW MANUFACTURING v. SNOWIZARD HOLDINGS (Fed. Cir. 2014) (NP) – Unassembled components still trigger on-sale bar when offered for sale
An offer for sale of the necessary components of the claimed invention triggers an on-sale bar even if the components require some assembly in order for the claimed invention to be put into operation. “The law only requires that the invention be ‘ready for...
HILL-ROM SERVICES, INC. v. STRYKER CORPORATION (Fed. Cir. 2014) (P) – Prosecution statements in unrelated applications cannot be used to interpret claims
This case reaffirms Pfizer v. Ranbaxy that “statements made during prosecution of [a] later, unrelated [] patent cannot be used to interpret claims of [another] patent.” Further, because prosecution focuses on “what [a reference] discloses” whereas claim construction...
LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. (Fed. Cir. 2014) (NP) – Open-ended claim terms may be limited by specification
Use of open-ended terms such as “including” does not “trump[] consideration of the specification and prosecution history and displace application of standard claim construction principles.” To the contrary, “it is well-established that claim terms must be construed in...