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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.
HOFFMANN-LA ROCHE INC. v. APOTEX INC. (Fed. Cir. 2014) (P) – Greater than reasonably expected levels of success
A greater than expected level of success “does nothing to undercut” a prima facie case of obviousness predicated on a finding of at least a reasonable expectation of success. Background / Facts: The patents at issue here are directed to methods of treating...
UNIVERSITY OF PITTSBURGH v. VARIAN MEDICAL SYSTEMS (Fed. Cir. 2014) (NP) – Computer-implemented means-plus-function algorithm structure breadth
For computer-implemented means-plus-function elements relying on algorithm structure, “[t]he algorithm need only include what is necessary to perform the claimed function.” It “[does] not need to include every possible implementation of the function, so long as it...
UNITED VIDEO PROPERTIES, INC. v. AMAZON.COM, INC. (Fed. Cir. 2014) (NP) – Prosecution history disclaimer as limiting broadening statements in the specification
Broadening statements in the specification are generally insufficient to overcome a corresponding clear disavowal in the prosecution history. It may therefore be wise to cite to those statements during prosecution (e.g., to combat a written description rejection)...
CHICAGO BOARD OPTIONS EXCHANGE v. INTERNATIONAL SECURITIES (Fed. Cir. 2014) (P) –Computer-implemented means-plus-function structure
The algorithm definiteness inquiry for corresponding means-plus-function structure is not one of literal support but whether “a person of ordinary skill in the art would understand the algorithmic structure for performing the claimed function.” Even distinct but...
IN RE TELES AG INFORMATION (Fed. Cir. 2014) (P) – Interpretation of recited function for means-plus-function elements
The statutory requirement for importing the specification’s structural limitations into a means-plus-function element does not extend to or otherwise impact the interpretation of the recited function as claimed. “When construing functional claims under § 112 ¶ 6, the...
HOWLINK GLOBAL LLC v. NETWORK COMMUNICATIONS (Fed. Cir. 2014) (NP) – Order of operations affecting interpretation of individual claim terms
While a context-specific analysis, an explicit order of operations in the claims may affect the interpretation of individual claim terms by providing additional antecedent basis for linking elements among the recited steps. Background / Facts: The patent being...
SHIRE DEVELOPMENT, LLC v. WATSON PHARMACEUTICALS, INC. (Fed. Cir. 2014) (P) – Adjectives characterizing claim elements
While a fact specific inquiry, an adjective characterizing a claim element may be interpreted as a direct property of the claim element itself rather than an emergent property derived from the claim element’s interaction with other elements (claimed or unclaimed)....
NOVATEK, INC. v. THE SOLLAMI COMPANY (Fed. Cir. 2014) (NP) – Preamble limitations
Limitations in the body of the claim that rely upon and derive antecedent basis from the preamble may render the preamble a necessary component of the claimed invention. A claim drafter should therefore take care to avoid, as here, converting the entire preamble into...
ALCON RESEARCH, LTD. v. BARR LABORATORIES, INC. (Fed. Cir. 2014) (P) – Enablement over broad range of variables and parameters
The fact that the claims encompass many variables and parameters does not by itself require undue experimentation. Adjusting variables may be relevant to optimizing a given implementation, but optimization may not be required in order to practice the claimed invention...
VEDERI, LLC v. GOOGLE, INC. (Fed. Cir. 2014) (P) – Required consideration of all claim terms
All words in a claim must be given due consideration. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Background / Facts: The patents being asserted here relate to methods for creating synthesized...