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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.
BOSE CORPORATION v. SDI TECHNOLOGIES, INC. (Fed. Cir. 2014) (NP) – Physical vs. paper relationships among claim components
On the one hand, this is a good case to cite during prosecution when facing a broadest reasonable interpretation based on the examiner drawing an arbitrary box around certain components in the prior art and labeling that box with the name of the claim element at...
E2INTERACTIVE, INC. v. BLACKHAWK NETWORK, INC. (Fed. Cir. 2014) (NP) – Prosecution disclaimer based on argued dstinctions over the prior art
Unambiguously arguing that the claimed invention is allowable over certain prior art because the prior art fails to disclose a particular feature implies that this feature is a required part of the claimed invention, and is sufficient to satisfy the clear and...
ANCORA TECHNOLOGIES, INC. v. APPLE, INC. (Fed. Cir. 2014) (P) – Inaccurate examiner statements and the sliding scale of claim term disclaimer
For disclaimer to attach to a given claim term, there must be a clear and unmistakable disavowal of claim scope by the applicant. Comments by other parties, such as the examiner in his or her reasons for allowance, are not by themselves sufficient to rise to the level...
CYBERFONE SYSTEMS v. CNN INTERACTIVE GROUP (Fed. Cir. 2014) (NP) – Patent eligibility of data categorization and storage implemented by computers
“[T]he well-known concept of categorical data storage, i.e., the idea of collecting information in classified form, then separating and transmitting that information according to its classification, is an abstract idea that is not patent-eligible.” The fact that a...
IN RE HOFFMANN (Fed. Cir. 2014) (NP) – Acknowledging need for further experimentation
While a fact and technology specific case, it is worth noting that characterizing certain calculations as “preliminary” and discussing the need for further experimentation may be detrimental to enablement. Background / Facts: The application on appeal here from...
ELCOMMERCE.COM v. SAP AG (Fed. Cir. 2014) (P) – Black box structure for well-known means-plus-function elements
Although a functional-type block diagram may not be sufficient to impart corresponding structure to new or unique elements claimed in means-plus-function form, “when the structure or acts that perform the function would be well within the skill of persons of ordinary...
STARHOME GMBH v. AT&T MOBILITY LLC (Fed. Cir. 2014) (P) – Related foreign prosecution history
Although the Federal Circuit has “cautioned against indiscriminate reliance on foreign file histories,” it has acknowledged that “statements made before foreign patent offices are sometimes relevant to interpreting the claims.” This is particularly true where, as...
GLAXOSMITHKLINE LLC v. BANNER PHARMACAPS, INC. (Fed. Cir. 2014) (P) – Written description support for non-functional limitations
For non-functional claim limitations, providing a description by structure and process of creation that matches the claimed term is sufficient to satisfy the written description requirement. Background / Facts: The patent being asserted here is directed to the...
CISCO SYSTEMS, INC. v. LEE (Fed. Cir. 2014) (NP) – Ancillary dependent claim elements
While a fairly fact-specific inquiry, in general, an ancillary and otherwise generic component will not by itself render a claim for the combination non-obvious. Dependent claims directed to such components should specifically recite how they are integrated with the...
FRANS NOOREN AFDICHTINGSSYSTEM v. STOPAQ AMCORR INC. (Fed. Cir. 2014) (P) – Prosecution history disclaimer / estoppel based on examiner commentary on the prior art
An examiner’s interpretation of the prior art by itself is not sufficient to warrant prosecution history disclaimer or estoppel. Background / Facts: The patent being asserted here is directed to protecting substrates – for example, manhole covers, underground tanks,...