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.
PLANTRONICS, INC. v. ALIPH, INC. (Fed. Cir. 2013) (P) – Estoppel attached to ambiguous restriction requirements
For prosecution history estoppel to apply, the patentee must make a “clear and unmistakable” disavowal of claim scope. “The election of an invention in response to an ambiguous restriction requirement in turn cannot be said to provide any guidance forming a basis for...
TEVA PHARMACEUTICALS USA v. SANDOZ INC. (Fed. Cir. 2013) (P) – Mathematical issues of indefiniteness
An ambiguous term that refers to an indeterminate one of several possibilities may be held to be indefinite rather than simply broad when the claim scope changes dramatically depending on how it is construed. This is especially true for mathematical ranges where the...
CHARLES MACHINE WORKS v. VERMEER MANUFACTURING (Fed. Cir. 2013) (P) – Vitiation doctrine as a bar to equivalency
This is the latest installment in a string of cases from the Federal Circuit attempting to curb what it sees as an abuse of the vitiation doctrine when considering equivalency. For vitiation to apply and bar equivalency, the element at issue must really be the...
IN RE BIMEDA RESEARCH & DEVELOPMENT (Fed. Cir. 2013) (P) – Written description support for negative limitations
Where a disclosure describes the exclusion of a broad genus, claims to embodiments which exclude particular species are only supported if the disclosure offers some guidance or “blaze marks” to guide the skilled artisan towards excluding that particular species....
NOVOZYMES A/S v. DUPONT NUTRITION BIOSCIENCES (Fed. Cir. 2013) (P) – Written description support from a myriad of disclosed potential variants
A claim must be considered as a whole for purposes of written description support, rather than as a collection of individually supported limitations. While the disclosure of a myriad of unclaimed or even inoperative embodiments is not necessarily invalidating, the...
IN RE DORON ADLER (Fed. Cir. 2013) (P) – Predictable variation as an obviousness rationale
If a person of ordinary skill can implement a predictable variation of the teachings in the prior art to arrive at the claimed invention, § 103 likely bars its patentability. Background / Facts: The application on appeal here from the PTO is directed to a system “for...
CALICO BRAND, INC. v. AMERITEK IMPORTS, INC. (Fed. Cir. 2013) (NP) – Panduit factors for establishing right to lost profits
The first Panduit factor concerning consumer demand for the patented product in order to establish a right to lost profit damages, rather than merely a reasonable royalty, cannot be satisfied by gross sales data alone when the patented invention is merely a component...
IN RE JOSEPH GIUFFRIDA (Fed. Cir. 2013) (NP) – Inherency in the prior art
Inherent disclosure requires that the prior art reference “necessarily include the unstated limitation.” Mere “probabilities or possibilities” are not enough to find that the prior art inherently discloses something not explicitly present. Background / Facts: The...
SMITH & NEPHEW, INC. v. REA (Fed. Cir. 2013) (P) – Obviousness of modifications to the physical dimensions of the prior art
Modifying the geometry of elements in a prior art design to accommodate objects of varying sizes is generally within the scope of routine skill possessed by an ordinary person. Physical combinability is not required for a finding of obviousness when the necessary...
FRESENIUS USA v. BAXTER INTERNATIONAL (Fed. Cir. 2013) (P) – Effect of PTO cancelation on litigation
The cancellation of claims in a patent by the PTO, pursuant to the agency’s statutory reexamination authority, is binding in any pending infringement litigation that has not been made sufficiently final, and is grounds for dismissal of the underlying suit. This case...