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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.
IN RE DOROTHY HARTMAN (Fed. Cir. 2013) (NP) – Indefiniteness to the extreme
Not much besides its entertainment value. This appears to simply be a case of an inexperienced and possibly delusional applicant. Background / Facts: It’s not a good sign for the appellant when the opinion starts off by noting that “[i]n essence, Hartman claimed to...
IN RE HUBBELL (Fed. Cir. 2013) (P) – Obviousness-type double patenting
Obviousness-type double patenting applies where an application and a conflicting patent have one or more inventors in common even if the inventive entities are not identical and even if the applications were never commonly owned. Further, when the application and...
FUNCTION MEDIA, L.L.C. v. KAPPOS (Fed. Cir. 2013) (NP) – PTO and court proceedings overlap
An invalidity challenge in an inter partes reexamination cannot be maintained by the PTO following a final decision in district court when that decision is appealed only on other grounds. Background / Facts: This appeal arises out of an inter partes reexamination...
RADIO SYSTEMS CORP v. LALOR (Fed. Cir. 2013) (P) – Equitable estoppel
Different patents must be treated individually for purposes of equitable estoppel, regardless of whether claims in a second patent are supported by the subject matter in a first patent when the second patent contains claims of a different scope. Background / Facts:...
MOVE, INC. v. REAL ESTATE ALLIANCE LTD. (Fed. Cir. 2013) (P) – Divided infringement
This a reminder that the law on divided infringement has recently changed. There is no longer the requirement that a single-entity be liable for direct infringement for inducement to exist. “Rather, liability under § 271(b) may arise when the steps of a method claim...
BRILLIANT INSTRUMENTS, INC. v. GUIDETECH, LLC. (Fed. Cir. 2013) (P) – Doctrine of equivalents
The court here has solidified its technically dicta discussion in Deere v. Bush Hog a couple months ago attempting to curb what it sees as an abuse of the vitiation doctrine when considering equivalency. The proper inquiry under the doctrine of equivalents, according...
IN RE ERIC JASINSKI (Fed. Cir. 2013) (NP) – Intended use
Performing an action to achieve a particular goal is properly limiting when the goal “provides the criteria by which the previously-recited [] limitation is analyzed.” For example, comparing memory locations “to verify” their accuracy indicates how the comparing is to...
CEPHALON, INC. v. WATSON PHARMACEUTICALS, INC. (Fed. Cir. 2013) (P) – Undue experimentation
“[T]he mere potential need for clinical work, without more, is not dispositive.” This opinion gives a great recap of the law surrounding undue experimentation and would be a good one to consult if the issue ever arises. Background / Facts: The patents here relate to...
FUNCTION MEDIA v. GOOGLE (Fed. Cir. 2013) (P) – Computer-implemented means-plus-function structure
This is another example of the perils of using means-plus-function claiming, especially for computer-implemented inventions. The specification must detail “how” a means element is implemented, and that “how” for software is the algorithm that transforms the...
ARKEMA INC. v. HONEYWELL INTERNATIONAL INC. (Fed. Cir. 2013) (P) – Justiciable controversy for a DJ action
The bar for filing a DJ action is pretty low. A good case to consult if your client is considering one as it gives a nice walk-through of the MedImmune requirements for showing sufficient immediacy and reality. Background / Facts: Honeywell and Arkema compete in the...