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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.
ROTATABLE TECHNOLOGIES LLC v. MOTOROLA MOBILITY LLC (Fed. Cir. 2014) (NP) – Specification and prosecution history may transform preamble into a limitation
“A preamble may limit the claimed invention if it recites additional structure or steps that the specification underscores as important, or if it is clearly relied on during prosecution to distinguish the claimed invention from the prior art.” Background / Facts: The...
INDUSTRIAL TECHNOLOGY RESEARCH v. ITC (Fed. Cir. 2014) (NP) – Claim interpretation cannot read out claim terms
Although claims are not necessarily limited to only the disclosed embodiments, they cannot be interpreted in a manner that would read out any of the claim terms. “[C]laims are interpreted with an eye toward giving effect to all terms in the claim.” Background / Facts:...
AUGME TECHNOLOGIES, INC. v. YAHOO! INC. (Fed. Cir. 2014) (P) – Intermediary element cutting off “initiation” of a claimed operation
The chain of causation required for “initiating” a given operation may be cut off by an intermediary element more closely associated with the “initiation” even if the preceding element begins the process which ultimately results in that operation. Background / Facts:...
GEMALTO S.A. v. HTC CORPORATION (Fed. Cir. 2014) (P) – Limitations imposed by an espoused purpose of the invention
Claim terms may be limited by an espoused “purpose of the invention” where the specification demonstrates that a particular shortcoming “was a defining feature of [the] prior art,” and that “the patented invention was designed to eliminate” that shortcoming, under the...
ALICE CORP. v. CLS BANK INT’L (S. Ct. 2014) (P) – Generic-computer-implemented (well-known) abstract ideas not patent-eligible
A wholly generic computer-implementation that does not “purport to improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field” is insufficient to transform an abstract idea into a patent-eligible invention...
TRITON TECH OF TEXAS, LLC v. NINTENDO OF AMERICA, INC. (Fed. Cir. 2014) (P) – Classes of algorithms are not corresponding structure for means-plus-function elements
“Disclosure of a class of algorithms that places no limitations on how values are calculated, combined, or weighted is insufficient to make the bounds of the claims understandable [under the definiteness requirement of 35 U.S.C. § 112(b)].” Further, the fact that a...
IN RE WIRTH (Fed. Cir. 2014) (NP) – Obviousness of modifying an identifier format
Although a fact specific inquiry, it may be obvious as here to replace the format of one type of identifier (e.g., a random but unique numerical identifier) with another type of identifier (e.g., a person’s name) when both achieve the same result (e.g., unique...
BRISTOL-MYERS SQUIBB COMPANY v. TEVA PHARMACEUTICALS USA, INC. (Fed. Cir. 2014) (P) – Post-invention discoveries do not teach away
Suggestions teaching away from combining references to arrive at the claimed invention but arising after the time of the invention are irrelevant. “Obviousness, and expectation of success, are evaluated from the perspective of a person having ordinary skill in the art...
ALLERGAN, INC. v. APOTEX INC. (Fed. Cir. 2014) (P) – Specific unpredictability in the field is more Important than general
The relevant inquiry with regard to the level of predictability in the art is not the general unpredictability of the field of the invention at large, but rather, the more specific unpredictability of arriving at the claimed invention in particular based on the state...
IN RE DINSMORE (Fed. Cir. 2014) (P) – Terminal disclaimers not generally rescindable via reissue
Although the court specifically noted that it “need not address broader questions about the intersection of reissue standards and terminal disclaimers,” at least in cases as here where an applicant knowingly and intentionally files a terminal disclaimer for patents...