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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.
GENERAL ELECTRIC COMPANY v. WILKINS (Fed. Cir. 2014) (P) – Inventorship contributions above the conventional state of the art
Inventorship requires contributions above the conventional state of the art. A co-inventor “must contribute in some significant manner to the conception or reduction to practice of the invention [and] make contribution to the claimed invention that is not...
IN RE ROSLIN INSTITUTE (EDINBURGH) (Fed. Cir. 2014) (P) – Patent eligibility of cloned animals
In general, “clones” which are identical genetic copies of a cell, cell part, or organism are nonstatutory subject matter under 35 U.S.C. § 101, unless the claims “describe clones that have markedly different characteristics from the donor animals of which they are...
IN RE PACKARD (Fed. Cir. 2014) (P) – Indefiniteness standard at the PTO
The MPEP’s indefiniteness standard in § 2173.05(e), namely, that “[a] claim is indefinite when it contains words or phrases whose meaning is unclear,” has been approved by the Federal Circuit as a reasonable implementation of the USPTO’s examination responsibility as...
GE LIGHTING SOLUTIONS, LLC v. AGILIGHT, INC. (Fed. Cir. 2014) (P) – Claim interpretation to include preferred embodiment
It is normally improper to construe claims in a manner that would exclude the preferred embodiment, especially where it is the only disclosed embodiment. In particular, “where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to...
APPLE INC. v. MOTOROLA, INC. (Fed. Cir. 2014) (P) – Contextual aspects of a claim element as connoting sufficient structure to avoid means-plus-function interpretation
This now appears to be the seminal case regarding invocation of means-plus-function limitations under 35 U.S.C. § 112, ¶6. In summing up the case law to this point, it states that “[t]hese cases teach that, if a limitation recites a term with a known structural...
K-SWISS INC. v. GLIDE’N LOCK GMBH (Fed. Cir. 2014) (NP) – Obviousness of range optimizations
“[W]here the general conditions of a claim are disclosed in the prior art, … it is not inventive to discover the optimum or workable ranges by routine experimentation.” Background / Facts: The patent on appeal here from reexamination at the PTO is directed to air or...
IN RE WALLEN (Fed. Cir. 2014) (NP) – The PTO’s evidentiary burden
When the PTO makes “core factual findings in a determination of patentability,” it “cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense.” Instead, the PTO “must point to...
BRAINTREE LABORATORIES, INC. v. NOVEL LABORATORIES, INC. (Fed. Cir. 2014) (P) – Claim term definitions in the specification
A definition section in the specification will almost certainly be taken as controlling, even, as here, where it contradicts the preferred embodiment. If used at all, extra care and attention should be taken to draft definitions only to the extent absolutely...
GILEAD SCIENCES, INC. v. NATCO PHARMA LIMITED (Fed. Cir. 2014) (P) – Expiration dates control for obviousness-type double patenting inquiries
A patent that issues after but expires before another patent still qualifies as a double patenting reference for that other patent. This expiration-date centric analysis is a departure from the traditional issue-date centric analysis. “[L]ooking to patent issue dates...
SANOFI-AVENTIS DEUTSCHLAND v. GLENMARK PHARMACEUTICALS (Fed. Cir. 2014) (P) – Inventor’s own motivations with regard to obviousness
An inventor’s own motivations (e.g., as expressed in a patent application) are generally irrelevant to the obviousness analysis. “Patentability does not turn on how the invention was made, but on whether it would have been obvious to a person of ordinary skill in the...