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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.
CREATIVE INTEGRATED SYSTEMS v. NINTENDO OF AMERICA (Fed. Cir. 2013) (NP) – Characterizing the “invention”
Limiting the definition of a claim term based on characterizations of the “invention” have no application where, as here, the other statements and illustrations make it clear that the limitations do not describe the invention as a whole. Nevertheless, it undoubtedly...
ATELIERS DE LA HAUTE-GARONNE v. BROETJE AUTOMATION USA INC. (Fed. Cir. 2013) (P) – Best mode
The best mode requirement is satisfied when the inventor includes the preferred mode in the specification. “There is no requirement in 35 USC 112 that an applicant point out which of his embodiments he considers his best mode; that the disclosure includes the best...
DOUGLAS DYNAMICS v. BUYERS PRODUCTS COMPANY (Fed. Cir. 2013) (P) – “Connected to”
Unless the claim context or specification explicitly counsels otherwise, the term “connected to” ordinarily encompasses indirect linkages as well as direct linkages. Background / Facts: The patent here is directed to a snowplow assembly that can be conveniently...
IN RE SCOTT SCHREER (Fed. Cir. 2013) (NP) – “Public” broadcast
While a non-precedential opinion and a fairly fact specific inquiry, the main takeaway here is that a “public” action does not preclude certain actions simply because they may require users to pay a fee or be first authorized in order to participate. Background /...
DEY, L.P. v. SUNOVION PHARMACEUTICALS, INC. (Fed. Cir. 2013) (P) – Third party public use under 35 U.S.C. § 102(b)
Even in the case of third-party uses, being “accessible to the public” still requires public availability; “secret or confidential third-party uses do not invalidate later-filed patents.” A formal confidentiality agreement, however, is not required to show non-public...
AVENTIS PHARMACEUTICALS v. AMINO CHEMICALS LTD. (Fed. Cir. 2013) (P) – Consistency of claim term constructions
The same claim term (e.g., “substantially”) can have different constructions depending upon the context of how the term is used within the claims and specification. Background / Facts: This case concerns the processes used to make various piperidine derivatives, which...
METSO MINERALS, INC. v. POWERSCREEN INTERNATIONAL (Fed. Cir. 2013) (NP) – Market pressure as an ‘obvious to try’ rationale
Market pressure may offer a sufficient obvious to try rationale to combine prior art references when (1) market demand drives design trends for such products, (2) there is a design need or market pressure to solve a problem, and (3) there are a finite number of...
BOWMAN v. MONSANTO CO. (S. Ct. 2013) (P) – Patent exhaustion
Patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder’s permission. Such planting and harvesting of subsequent generations constitutes an impermissible “making” of the claimed invention. The...
CLS BANK INTERNATIONAL v. ALICE CORPORATION (Fed. Cir. 2013) (P, en banc) – Patent eligibility of computer-implemented inventions
Although a majority of the judges on the court agreed that the method claims do not recite patent eligible subject matter, no majority of those judges agreed as to the legal rationale for that conclusion. Accordingly, though many supporting opinions were published...
ALLERGAN, INC. v. SANDOZ INC. (Fed. Cir. 2013) (P) – Obviousness weighing of the evidence
The general lesson is that obviousness involves a weighing of the evidence and that it may be the case that no issue alone is dispositive. More specific lessons are that motivation to combine in drug applications “cannot be limited to those reasons the FDA sees fit to...