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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.
VERITAS TECHNOLOGIES LLC v. VEEAM SOFTWARE CORPORATION (Fed. Cir. 2016) (P) – A distinguishing combination of newly added features is generally sufficient for an IPR motion to amend
A showing that the combination of newly added features in substitute claims for inter partes review distinguishes over the prior art is generally sufficient to satisfy the requirements of a motion to amend without addressing whether each newly added feature was...
SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC. (Fed. Cir. 2016) (P) – Original claims can provide written description support even for later added claims
Original claims can provide written description support even for later added claims. Here, for example, the asserted claims were found to be supported by the original disclosure even though the specification focused on a narrower embodiment and even though the...
TDE PETROLEUM DATA SOLUTIONS v. AKM ENTERPRISE, INC. (Fed. Cir. 2016) (NP) – Ordinary data processing steps to achieve a desired result are not patent-eligible
Ordinary data processing steps to achieve a desired result do not transform an otherwise abstract idea into a patent-eligible application under 35 U.S.C. § 101. Here, for example, a method of processing oil well drill state information was found to be...
ARENDI S.A.R.L. v. APPLE INC. (Fed. Cir. 2016) (P) – A “common sense” reason for adding a missing limitation to the prior art is generally improper
A “common sense” reason for adding a missing limitation to the prior art to establish obviousness is generally improper unless the limitation is unusually simple and a reasoned analysis is still provided. Here, for example, adding a search operation to detect...
IN RE CSB-SYSTEM INTERNATIONAL, INC. (Fed. Cir. 2016) (P) – The PTO must apply the Phillips standard for claim construction whenever a patent expires
The PTO must apply the Phillips standard for claim construction whenever a patent expires, even in the middle of proceedings that had previously used the broadest reasonable interpretation standard. Here, for example, the Board’s continued use of the broadest...
ELECTRIC POWER GROUP, LLC v. ALSTOM S.A. (Fed. Cir. 2016) (P) – The collection, analysis, and display of information does not add significantly more under Alice step two
The collection, analysis, and display of information does not generally amount to significantly more under Mayo/Alice step two. Here, for example, the real-time performance monitoring of an electric power grid was found to be patent-ineligible because the claims...
GPNE CORP. v. APPLE INC. (Fed. Cir. 2016) (P) – Both repeated and summation characterizations of the invention serve to limit the invention as a whole
Both repeated and summation characterizations of the invention serve to limit the invention as a whole. Here, for example, the generic term “node” was found to be limited to a “pager … that operates independently from a telephone network” because the specification...
RESPIRONICS, INC. v. ZOLL MEDICAL CORPORATION (Fed. Cir. 2016) (NP) – Unclaimed elements essential for operation of the claimed invention need not necessarily be claimed
Unclaimed elements that are essential for operation of the claimed invention need not necessarily be claimed. Here, for example, information about how “patient compliance data” was obtained for the claimed recording of such information was found to be permissibly...
ADVANCED GROUND INFORMATION v. LIFE360, INC. (Fed. Cir. 2016) (P) – A coined-term element is generally subject to a means-plus-function interpretation
A coined-term element is generally subject to a means-plus-function interpretation. Here, for example, the claimed “symbol generator” for plotting user locations on a map was found to invoke 35 U.S.C. § 112, ¶ 6 because its name was coined for the purposes of the...
IN RE MAGNUM OIL TOOLS INTERNATIONAL (Fed. Cir. 2016) (P) – The burden of proof does not automatically shift to the patent owner as soon as the PTO institutes an IPR
The burden of proof does not automatically shift between the petitioner and the patent owner as soon as the PTO institutes an inter partes review. Here, for example, the petitioner’s failure to specifically address a motivation to combine the two prior art references...