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.
ACCENTRA v. STAPLES (Fed. Cir. 2013) (NP) – The “invention”
“Our cases instruct that when a patent describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.” Background / Facts: The patent here is directed to “a spring-actuated desktop stapler that ... relates to an...
LIGHTING BALLAST v. PHILIPS ELECTRON (Fed. Cir. 2013) (NP) – Means plus function
Another reminder to use means-plus-function claiming sparingly and with caution. The possibility that an ordinarily skilled artisan (e.g., expert witness) could find a structure that would work does not satisfy the disclosure requirements of means-plus-function...
CW ZUMBIEL v. KAPPOS (Fed. Cir. 2012) (P) – Teaching away
This is the second case this month in which the court has taken a fairly expansive view of “teaching away.” Here, the mere fact that the reference taught a specific range for locating the tear line on a container and that range did not include the claimed location was...
PRESIDIO COMPONENTS v. AMERICAN TECHNICAL CERAMICS (Fed. Cir. 2012) (P) – Lost profits
Not much from a pure prosecution standpoint, but damages issues may arise when otherwise counseling clients. The point here is that lost profit damages, often the preferred measure of damages for the patentee, may be recovered even when the patentee does not actually...
INTEL CORP. v. NEGOTIATED DATA SOLUTIONS, INC. (Fed. Cir. 2012) (P) – Effect of reissuance on licenses
A license under a patent that is not directed to any specific claims, field of use, or other limited right will generally be interpreted to extend to the full scope of protection provided by law to the invention that is the subject of that patent. Reissuance, by...
ASTRAZENECA v. AUROBINDO (Fed. Cir. 2012) (P) – Reissue to consider IDS
Somewhat of a moot point going forward in view of the new AIA supplemental examination procedures, the takeaway here is simply that a reissue application is permissible for an unintentional failure to file an IDS, and that “deceptive intent” in the reissue statute...
BROOKS v. DUNLOP MANUFACTURING INC. (Fed. Cir. 2012) (P) – False marking
Congress’s retroactive elimination of the qui tam provision from § 292 does not violate the Due Process Clause or the Intellectual Property Clause of the Constitution. For all intents and purposes, false marking suits on behalf of otherwise disinterested third parties...
OSRAM SYLVANIA, INC. v. AMERICAN INDUCTION TECHNOLOGIES, INC. (Fed. Cir. 2012) (P) – Anticipation of a species by a genus
Literal overlap between a prior art genus and a claimed species is not by itself sufficient to sustain a finding of anticipation. It can be overcome by showing that one skilled in the art would recognize that the prior art disclosure was overly broad (or at least...
KINGPAK TECH v. KAPPOS (Fed. Cir. 2012) (NP) – “Substantially”
Be careful what you wish for. While terms like “substantially” give you some flexibility in asserting infringement and protecting against design-arounds, they also open you up to a broader range of prior art attacks. If these terms are necessary, the specification and...
FLUOR TEC, CORP. v. U.S. PATENT AND TRADEMARK OFFICE (Fed. Cir. 2012) (NP) – Teaching away
A reference teaches away “when a person of ordinary skill, upon reading the reference ... would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). (Another good case pointed to by the court...