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.
CONVOLVE v. COMPAQ (Fed. Cir. 2013) (NP) – Lack of enablement for overbreadth
While somewhat of a fact specific case, the main lesson here is to be careful on how broadly you craft your claims and to provide at least some dependent claims that more specifically target working embodiments. As the court remind us, “[b]y choosing such broad claim...
RAMBUS INC. v. REA (Fed. Cir. 2013) (NP) – Broadest reasonable interpretation at the PTO
While I appreciate the CAFC’s concern that the PTO often takes an overly broad interpretation of claim terms that is neither reasonable nor consistent with the specification, the court may have been overly harsh in this situation. Nevertheless, this is a good case to...
WYETH v. ABBOTT LABORATORIES (Fed. Cir. 2013) (P) – Excessive even if routine experimentation
The need to sift through tens of thousands of potential variations on the disclosed embodiments to determine their viability, with each taking on the order of weeks in a field that is generally unpredictable, constitutes excessive and therefore undue experimentation,...
COMMIL USA, LLC v. CISCO SYSTEMS, INC. (Fed. Cir. 2013) (P) – Good-faith belief of invalidity to negate inducement
A good-faith belief of invalidity is evidence that may negate the specific intent to encourage another’s infringement, which is required for induced infringement. Background / Facts: The patent here relates to providing faster and more reliable handoffs of mobile...
ULTRAMERCIAL, INC. v. HULU, LLC (Fed. Cir. 2013) (P) – Patent eligibility of computer-implemented inventions
If you are looking for language to support an assertion that a computer-implemented invention is patent eligible, this is a good case to consult. The court emphasized, for example, that the claims did not cover the use of advertising as currency “disassociated with...
NOVO NORDISK A/S v. CARACO PHARMACEUTICAL (Fed. Cir. 2013) (P) – Inequitable conduct for overstating your case
While the Federal Circuit continues to set the bar high for establishing inequitable conduct, this case is a reminder of one’s duty of candor in dealing with the PTO and that substantially overstating your case may ultimately get you in trouble. After all, this one...
ASSOCIATION FOR MOLECULAR PATHOLOGY v. MYRIAD GENETICS, INC. (S. Ct. 2013) (P) – Patent eligibility of isolated genes
A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated. On the other hand, cDNA is patent eligible because it is not naturally occurring. Background / Facts: The patents here are directed to human genes now...
IN RE ROBERT YEAGER (Fed. Cir. 2013) (NP) – Intended use
A distinction predicated on merely on application to a particular class of users is likely to be found non-distinguishing intended use. Background / Facts: The application on appeal here from the PTAB is directed to automated methods of identifying relevant prior art...
IN RE ANTHONY BAYNE (Fed. Cir. 2013) (NP) – Level of ordinary skill
The level of skill afforded to the hypothetical ordinary person has been heightened since KSR. Actions such as reversing the order of operations with no practical effect are deemed to be within the creativity of one skilled in the art, especially when the technology...
REGENTS OF UNIV. OF MINNESOTA v. AGA MEDICAL CORPORATION (Fed. Cir. 2013) (P) – Prosecution disclaimer among related applications
In general, a prosecution disclaimer will only apply to a subsequent patent if that patent contains the same claim limitation as its predecessor. “If the language of the later limitation is significantly different, the disclaimer will not apply.” This suggests that...