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.
SMARTGENE, INC. v. ADVANCED BIOLOGICAL LAB (Fed. Cir. 2014) (NP) – Computerization of otherwise routine mental steps
More than generic computerization is required to make subject-matter-eligible a claim “in which every step is a familiar part of the conscious process that [artisans] can and do perform in their heads.” Instead, the court identified two broad classes of eligible...
MEDTRONIC COREVALVE, LLC v. EDWARDS LIFESCIENCES CORP. (Fed. Cir. 2014) (P) – Priority statement requirements for specific reference to parent applications
Take care to update the priority statement in each successive child application to properly reflect the entire chain of priority from the perspective of the new application. The “specific reference” requirement for claiming priority mandates “each [intermediate]...
NOVARTIS AG v. LEE (Fed. Cir. 2014) (P) – Patent term adjustment calculations under request for continued examination practice
For the purposes of calculating the patent term adjustment under § 154(b), the time between allowance and issuance is not “time consumed by continued examination” and therefore not to be excluded from adjustments given to the patentee under § 154(b)(1)(B)(i)....
IN RE ENHANCED SECURITY RESEARCH LLC (Fed. Cir. 2014) (P) – Incomplete copies of printed publications as prior art
The fact that a printed publication may be incomplete (e.g., missing pages) does not automatically exclude it from being applied as prior art without a showing that the missing sections might “plausibly” teach away from the claimed invention. It is not plausible to...
IN RE GIANNELLI (Fed. Cir. 2014) (P) – Physical capability as an obviousness rational for an element “adapted to” perform a specific function
An element that is “adapted to” perform a particular function in the sense of being specially “designed or constructed” for that purpose (as made clear by the specification) is not anticipated or rendered obvious by a structure specifically designed or constructed for...
**YEAR IN REVIEW 2013**
As 2013 officially comes to a close, we are pleased to present our annual comprehensive guide to all the happenings in patent prosecution case law over the last year. We hope that you will find it useful as a handy reference in your practice. Digital download: Year in...
MOTOROLA MOBILITY LLC v. ITC (Fed. Cir. 2014) (NP) – Antecedent basis requiring consistency in claim construction
In general, “an element” that is later referenced as “the element” with corresponding antecedent basis must be the same element. Thus, as here, “a change” that is identified and later referenced as “the change” being communicated requires that the same “change” being...
NAZOMI COMMUNICATIONS, INC. v. NOKIA CORPORATION (Fed. Cir. 2014) (P) – Interpretation of hardware requiring software to implement its functional limitations
When hardware is claimed in terms of functional limitations, and the hardware cannot meet these limitations in the absence of enabling software, “the claims are properly construed as claiming an apparatus comprising a combination of hardware and software capable of...
INSTITUT PASTEUR & UNIVERSITE v. FOCARINO (Fed. Cir. 2013) (P) – Reasonable expectation of success of a particular goal
“Knowledge of the goal does not render its achievement obvious.” Obviousness generally requires that a skilled artisan have reasonably expected success in achieving that goal, and that goal in particular, not a different goal that may be a less challenging but also...
ASTRAZENECA AB v. HANMI USA, INC. (Fed. Cir. 2013) (NP) – Characterizing “the invention”
Another reminder that it is generally not good practice to characterize “the invention” as relating to any particular embodiments. By “conspicuously choosing only certain members of [a] class,” and referring to them as “the invention,” the patentee will be considered...