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.
MIKKELSEN GRAPHIC ENGINEERING v. ZUND AMERICA (Fed. Cir. 2013) (NP) – Limiting claims to preferred embodiments
The court reiterated here its position that “[t]he use of a specific embodiment for illustrative purposes does not impliedly exclude other embodiments.” It is also at least noteworthy that the court highlighted and lent credence to the use of a boilerplate disclaimer...
HAMILTON BEACH BRANDS v. SUNBEAM PRODUCTS (Fed. Cir. 2013) (P) – Supplier contracts as an on-sale bar
There is no “supplier exception” to the on-sale bar. It is of no consequence that a “commercial offer for sale” is made by the patentee’s own supplier or that it was made to the patentee itself. A patent application or at least provisional application should be filed...
FLEMING v. COWARD (Fed. Cir. 2013) (NP) – Timeliness of challenging the PTO in federal court
The prerequisite to requesting judicial review of the PTO’s rejection of a patent application under the proscribed statutory provisions is the exhaustion of all remedies before the PTO by procuring (1) a “decision from the Board” or (2) “final agency action.” An...
LEO PHARMACEUTICAL PRODUCTS v. REA (Fed. Cir. 2013) (P) – Discovery of the problem leading to the invention
“[A]n invention can often be the recognition of a problem itself.” This may be especially evident where the problem has persisted for a long time without being recognized. Such a “considerable time lapse suggests instead that [an obviousness rejection] only traverses...
TAURUS IP v. DAIMLERCHRYSLER (Fed. Cir. 2013) (P) – Inventorship records
While somewhat of a moot point going forward in view of the first-to-file AIA transition, this case emphasizes the importance of keeping proper records of inventorship, including indications of what changes are made to a document and when. Background / Facts: The...
ARIA DIAGNOSTICS, INC. v. SEQUENOM, INC. (Fed. Cir. 2013) (P) – Limiting claim terms beyond their ordinary meaning
It is “not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit a claim term beyond its ordinary meaning.” Even if a specification has only one embodiment, its claims will not be confined to that example “unless the...
RESEARCH FOUNDATION v. MYLAN PHARMACEUTICALS (Fed. Cir. 2013) (NP) – Examining dependent claims
Dependent claims must be examined separately from the independent claims from which they depend. Background / Facts: The patents here claim methods for treating medical conditions, such as inflammatory disorders, characterized by increased endogenous nitric oxide...
APPLE INC. v. ITC (Fed. Cir. 2013) (P) – Importance of secondary considerations of non-obviousness
Secondary considerations of non-obviousness are a vital part of the obviousness inquiry and must be given due consideration. Background / Facts: The patents on appeal here from an adverse decision at the ITC relate to smartphone touchscreens. In particular, one patent...
3M INNOVATIVE PROPERTIES v. TREDEGAR CORPORATION (Fed. Cir. 2013) (P) – Priority of claim interpretation tools
Intrinsic claim interpretation tools such as the specification supersede extrinsic tools such as dictionaries and grammar manuals even when they are couched in terms of informing a plain and ordinary meaning. Background / Facts: The patents-in-suit relate to...
CHEESE SYSTEMS, INC. v. TETRA PAK CHEESE (Fed. Cir. 2013) (P) – Terms of orientation
While terms of orientation (e.g., horizontal vs. vertical, up vs. down) provide more fodder for opposing argument than is probably desired, the Federal Circuit has been fairly lenient on the patentee in its loose interpretation of these terms. Background / Facts: The...