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.
VERSATA SOFTWARE, INC. v. SAP AMERICA, INC. (Fed. Cir. 2013) (P) – Activation of latent infringing functions
A device may be found to infringe if it is reasonably capable of infringement during its ordinary use, even if the infringing functions must be activated before satisfying the particular language of the claim. When “a user must activate the functions programmed into a...
SHIMANO, INC. v. REA (Fed. Cir. 2013) (NP) – Antecedent basis in claim construction
While somewhat context specific, the most natural reading of “at least two elements” followed by reference to “the elements” implies that the later reference refers to all of the earlier elements, not a subset thereof. Background / Facts: The patent on appeal from...
BIOSIG INSTRUMENTS, INC. v. NAUTILUS, INC. (Fed. Cir. 2013) (P) – Indefiniteness
The discussion of indefiniteness case law in this opinion is quite comprehensive and worth consulting if you ever need general guidance on the topic. Here, the court focused on the idea that the claims provide “inherent” parameters of the claimed “spaced...
CEATS, INC. v. CONTINENTAL AIRLINES, INC. (Fed. Cir. 2013) (NP) – A “set”
Although somewhat context specific, the term “set” generally refers to a collection of one or more than one items; it is not synonymous with a “plurality” of items and does not necessarily require that more than one item make up the set. If you intend for the term...
SPEEDTRACK, INC. v. WALMART.COM USA, LLC (Fed. Cir. 2013) (NP) – Intrinsic vs. extrinsic evidence
When the intrinsic evidence provides sufficient guidance in informing a proper claim construction, extrinsic evidence need not be considered. Be mindful of any narrower characterizations you make in the specification, claims, and prosecution history, and ask yourself...
BIOGEN IDEC INC. v. GLAXOSMITHKLINE LLC (Fed. Cir. 2013) (P) – Prosecution history estoppel
It is well established that “it is the applicant, not the examiner who must give up or disclaim subject matter,” and generally remaining silent when confronted by statements made by the examiner during prosecution (e.g., reasons for allowance) is not sufficient to...
BAYER HEALTHCARE PHARMA v. WATSON PHARMA (Fed. Cir. 2013) (P) – Teaching away
“[A] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed ... is the preferred, or most desirable, combination.” Here, just because one...
CAPITAL MACHINE COMPANY, INC. v. MILLER VENEERS, INC. (Fed. Cir. 2013) (NP) – Prosecution history estoppel
Your arguments during prosecution should focus on (and mainly quote verbatim) the language of the claims, not the “invention” as a whole. Certainly, do not expressly characterize the “invention” as a whole with narrower terms than those used in the claims. Background...
CHIKEZIE OTTAH v. VERIFONE SYSTEMS, INC. (Fed. Cir. 2013) (NP) – Prosecution history estoppel
The lesson here is to never argue more than you have to. “[T]he doctrine of prosecution history estoppel prevents a patent owner from recapturing through the doctrine of equivalents subject matter surrendered [e.g., by attorney argument during prosecution] to acquire...
IN RE STEVE MORSA (Fed. Cir. 2013) (P) – Prior art enablement burden of proof
An applicant is not required to submit affidavits or declarations to challenge the enablement of prior art references. Any non-frivolous argument that cited prior art is not enabling must be addressed by the PTO. Background / Facts: The application on appeal from the...