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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.
BENNETT MARINE, INC. v. LENCO MARINE, INC. (Fed. Cir. 2013) (NP) – Black box structure for means-plus-function elements
In general, a generic black box diagram will not be sufficient to impart broad corresponding structure to a means-plus-function element. This is especially true if it encompasses all elements capable of performing the recited function (e.g., a box simply labeled with...
PRONOVA BIOPHARMA NORGE v. TEVA PHARMACEUTICALS (Fed. Cir. 2013) (NP) – Invalidating public use from a marketing campaign
An invalidating public use need not be the intended use of the invention disclosed or claimed in the patent. If the invention is fully disclosed to the public without restriction, a public use will be deemed to have occurred. Background / Facts: The patents-in-suit...
ST. JUDE MEDICAL, INC. v. ACCESS CLOSURE, INC. (Fed. Cir. 2013) (P) – Divisional application safe harbor against double patenting
The judicially-created “consonance” concept derives from the safe harbor’s “as a result of” requirement and specifies that the “line of demarcation between the ‘independent and distinct inventions’ that prompted the restriction requirement be maintained” in order for...
COMAPER CORPORATION v. ANTEC, INC. (Fed. Cir. 2013) (NP) – Loose anticipation analysis
A prior art device anticipates an apparatus claim only if it includes, “either expressly or inherently, all the structural limitations contained in the asserted apparatus claims.” Obviousness is a different inquiry, requiring additional considerations that cannot be...
ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC. (Fed. Cir. 2013) (P) – Subject matter eligibility of system claims
System claims that closely track method claims and are grounded by the same meaningful limitations will generally rise and fall together. In order for a system claim to offer a “meaningful limitation” beyond an otherwise abstract method claim that would be sufficient...
BAYER CROPSCIENCE AG v. DOW AGROSCIENCES LLC (Fed. Cir. 2013) (P) – Negligent claim drafting
If there is doubt as to whether a particular claim term is an accurate descriptor for the limitation at issue, it is probably best to use a more generic or even functional term, rather than a scientific term with an accepted meaning that may not be accurate. A court...
TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC (Fed. Cir. 2013) (P) – Prosecution-based surrender of claim scope among related applications
Prosecution-based surrenders of claim scope can be cut off from impacting related patents by a sufficient showing of distinction among the patents to compel a different reading, such as changes in claim terminology or even in the specification when the later...
COOPER NOTIFICATION, INC. v. TWITTER, INC. (Fed. Cir. 2013) (NP) – Differential treatment of claims at the PTO
The PTO’s differential treatment of different claims can be used to “provid[e] the district court with the expert view of the PTO” in construing those claims that survive examination. Background / Facts: The patent at issue here covers a system of mass messaging in...
APPLIED MEDICAL RESOURCES v. TYCO HEALTHCARE GROUP (Fed. Cir. 2013) (NP) – Vitiation as a bar to equivalency
The doctrine of equivalents is unavailable as a matter of law “if a theory of equivalence would entirely vitiate a particular claim element.” Be careful not to draft or amend a claim element in such a way that would unduly limit it to a particular kind of element...
SKINMEDICA INC v. HISTOGEN INC (Fed. Cir. 2013) (P) – Characterizing the conventional state of the art
The lesson here is probably above all a cautionary tale about loose language. In its full context, it appears that the patentee was merely providing examples of conventional methods used for two-dimensional culturing and not intending to disclaim any particular method...