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.
LIGHTING BALLAST CONTROL LLC v. PHILIPS ELECTRONICS NORTH AMER (Fed. Cir. 2014) (P, en banc) – De novo review of claim construction at the Federal Circuit
Although of little direct or immediate impact on prosecution, retaining centralized de novo review at the Federal Circuit should at least help with providing “national uniformity, consistency, and finality to the meaning and scope of patent claims,” even at the PTO...
TAKEDA PHARMACEUTICAL CO. v. ZYDUS PHARMACEUTICALS USA (Fed. Cir. 2014) (P) – Numerical value flexibility is not inherent
There is no universally accepted or standard level of imprecision afforded to numerical values in claims. Any desired flexibility in numerical values should be expressly recited (e.g., using the term “about”) and supported in the description. Ultimately, “[t]he...
RING & PINION SERVICE INC. v. ARB CORPORATION LTD (Fed. Cir. 2014) (P) – Application of the doctrine of equivalents to means-plus-function limitations
“There is no … foreseeability limit on the doctrine of equivalents,” even for “the application of the doctrine of equivalents for means-plus-function limitations.” Background / Facts: The patent being asserted here is directed to an improved automobile locking...
BUTAMAX(TM) ADVANCED BIOFUELS v. GEVO, INC. (Fed. Cir. 2014) (P) – Definition sections in the specification
Although the patentee ultimately prevailed with a broader construction, the use of a definition section in the specification will almost certainly be taken as the requisite clear intent to redefine a given term, and any narrowing statements imported into the claims....
SOLVAY, S.A. v. HONEYWELL INTERNATIONAL (Fed. Cir. 2014) (P) – Invention conceived by a foreign inventor and reduced to practice in the U.S. as prior art under § 102(g)(2)
The doctrine of inurement, defining when the activities of others inure to the benefit of an inventor, does not require that the prior inventor under § 102(g)(2) expressly request or direct a non-inventor reducing the invention to practice to perform the reductive...
TEMPO LIGHTING, INC. v. TIVOLI, LLC (Fed. Cir. 2014) (P) – Prosecution history in claim interpretation at the PTO & third-party requester cross-appeals
(1) Prosecution history serves as intrinsic evidence for purposes of claim construction even “in construing patent claims before the PTO,” such that an “examiner err[s] by resorting to extrinsic evidence that [is] inconsistent with the more reliable intrinsic...
PFIZER INC. v. TEVA PHARMACEUTICALS USA (Fed. Cir. 2014) (NP) – Clearly distinguishing specific examples from the claimed invention at large
It is helpful to clearly distinguish any specific examples given in the specification from the claimed invention at large to avoid conflating the narrower examples with the more generic claim language. For example, the reporting of test results only directed to a...
ENOCEAN GMBH v. FACE INTERNATIONAL CORP (Fed. Cir. 2014) (P) – Means-plus-function interpretation of and priority disclosure requirements for a “receiver”
A “receiver” is reasonably well understood in the art as a name for a structure which performs the recited function. “The term ‘receiver’ (i.e., [in] the absence of the term means) presumptively connotes sufficiently definite structure to those of skill in the art” to...
REALTIME DATA, LLC v. MORGAN STANLEY (Fed. Cir. 2014) (NP) – Ambiguity as a basis for lack of written description
At its heart, this case appears to be a cautionary tale of ambiguity being used against the drafting party (in this case, the patentee who is responsible for the content of its application). At the very least, original claim terminology should be consistent with the...
IN RE CHAGANTI (Fed. Cir. 2014) (NP) – Common sense as an obviousness rationale
Although probably dicta, it is encouraging that the court “caution[ed] the Board and the PTO that [obviousness] reasons must be clearly articulated” and that “[i]t is not enough to say that there would have been a reason to combine two references because to do so...