Blog
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.
Q. I. PRESS CONTROLS v. LEE (Fed. Cir. 2014) (P) – Proactive arguments against non-asserted rejections on appeal
The Board has been encouraged here by the Federal Circuit to review the examiner’s rejections for consistency and make independent rejections based at least on the art before it where appropriate. Depending on how this plays out, it may make sense to proactively argue...
NASSAU PRECISION CASTING v. ACUSHNET COMPANY, INC. (Fed. Cir. 2014) (NP) – Methods of product design
Method claims may encompass not only methods of manufacture but also other types of processes, including those performed by a designer of a new product, and therefore must be read reasonably to determine the appropriate context and corresponding actors covered....
IN RE REIJERS (Fed. Cir. 2014) (NP) – Inherent anticipation for a different purpose
Inherent disclosure may serve as a basis for a finding of anticipation even if the prior art does not contemplate using its teachings for specifically the same purpose as the claimed invention. Background / Facts: The application on appeal here from rejection at the...
IN RE RAMBUS, INC. (Fed. Cir. 2014) (P) – Incidental operation of the prior art under contrived circumstances
Incidental operation of a prior art element under only limited and contrived circumstances does not necessarily teach or suggest a claim element intentionally configured for such operation. Background / Facts: The patent on appeal here from rejection during...
LIMELIGHT NETWORKS, INC. v. AKAMAI TECHNOLOGIES, INC. (S. Ct. 2014) (P) – End of divided infringement via inducement
Inducement of infringement of a method claim under §271(b) requires that performance of all the claimed steps be attributed to a single person in a manner that would constitute direct infringement under §271(a). The doctrine of divided infringement via inducement as...
NAUTILUS, INC. v. BIOSIG INSTRUMENTS, INC (S. Ct. 2014) (P) – Standard for indefiniteness
A claim limitation is indefinite if, read in light of the specification delineating the patent, and the prosecution history, it fails to inform, with “reasonable certainty,” those skilled in the art about the scope of the invention. This “reasonably certainty”...
K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC (Fed. Cir. 2014) (P) – Assertion of common knowledge that a limitation is well-known
The PTO is required to produce factual evidence to show that a given limitation is known in the art. Although “an assessment of basic knowledge and common sense” may factor into the obviousness rationale for making a proposed combination of known elements, such...
SUFFOLK TECHNOLOGIES, LLC v. AOL INC. (Fed. Cir. 2014) (P) – Internet forum postings as prior art
While a printed publication must be sufficiently disseminated to qualify as prior art under 35 U.S.C. § 102, it “need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.” Thus, as here, even a non-indexed and...
TOBINICK v. OLMARKER (Fed. Cir. 2014) (P) – Conflicting descriptions for written description requirement
An application need only reasonably convey to one skilled in the art that the inventor had possession of at least one embodiment that meets the claim limitations at issue to satisfy the written description requirement of 35 U.S.C. § 112(a). Conflicting descriptions...
INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC. (Fed. Cir. 2014) (P) – Requirement for an explicit obviousness rationale
To establish a prima facie case of obviousness under 35 U.S.C. § 103, it is not sufficient to show that the references are like separate pieces of a simple jigsaw puzzle. An explicit reason or motivation must be established for one of ordinary skill in the art at the...