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.
SANOFI-AVENTIS v. PFIZER INC. (Fed. Cir. 2013) (P) – Conception of a DNA segment
“When the subject matter is a DNA segment, conception requires possession and appreciation of the DNA segment that is claimed.” This does not, however, necessarily require the full and correct nucleotide sequence, as long as the identified information is sufficient...
INTEGRATED TECHNOLOGY CORP. v. RUDOLPH TECHNOLOGIES, INC. (Fed. Cir. 2013) (P) – Tangential relation exception to prosecution history estoppel
It is not necessarily true that “equivalents not within the prior art must be tangential to the amendment.” As here, an equivalent may be outside the scope of the prior art and the prior art may operate in the same way as the claimed invention. Nevertheless,...
LIFESCAN SCOTLAND, LTD. v. SHASTA TECHNOLOGIES, LLC (Fed. Cir. 2013) (P) – Exhaustion by products given away for free
“[P]atent exhaustion principles apply equally to all authorized transfers of title in property, regardless of whether the particular transfer at issue constituted a gift or a sale.” Background / Facts: The patent at issue here is directed to a blood glucose meter,...
RANDALL MFG. v. REA (Fed. Cir. 2013) (P) – Industry standards as an obviousness rationale
Citing KSR, the court reminds us here of the importance of recognizing the role of common knowledge and common sense in determining obviousness. In particular, a claimed invention that merely conforms to industry standards is likely to be found obvious as being...
IN RE HAASE (Fed. Cir. 2013) (NP) – Anticipation and obviousness of ranges
When a claim recites a limitation that captures a range of values, it is anticipated if a specific example falling within that range is disclosed in the prior art. Further, “it is not inventive to discover the optimum or workable ranges by routine experimentation,...
ASTRAZENECA LP v. BREATH LIMITED (Fed. Cir. 2013) (NP) – Characterizing “the invention”
While sufficiently ambiguous to escape harm in this instance, it is generally not good practice to characterize “the invention” as relating to any particular embodiment. It did, after all, take an appeal to the Federal Circuit to overturn a district court’s...
SYNTHES USA, LLC v. SPINAL KINETICS, INC. (Fed. Cir. 2013) (P) – Species written description support for a broader genus
Although it is possible that a “disclosure of a species may be sufficient written description support for a later claimed genus including that species,” this is not sufficient for the more unpredictable arts. “[T]here are no bright-line rules governing, for example,...
IBORMEITH IP, LLC v. MERCEDES-BENZ USA (Fed. Cir. 2013) (P) – Generic computer algorithms supporting means-plus-function structure
“A description of an algorithm that places no limitations on how values are calculated, combined, or weighted is insufficient to make the bounds of the claim understandable.” Background / Facts: The patent being asserted here is directed to the monitoring of...
GARRIDO v. HOLT (Fed. Cir. 2013) (NP) – Waiver of arguments absent from opening brief on appeal before PTAB
Arguments not raised in an opening brief will generally be considered to have been waived. Background / Facts: The reexamination application on appeal here from the PTAB is directed to an “Electronic Bookstore Vending Machine” for printing and binding books on demand....
IN RE BIEDERMANN (Fed. Cir. 2013) (P) – What constitutes a new rejection by the PTO
“[M]ere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection.” When the PTO “relies on new facts and rationales not previously raised,” this constitutes a new rejection “to which...