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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.
LENDINGTREE v. ZILLOW, INC. (Fed. Cir. 2016) (NP) – Merely facilitating a fundamental economic practice using generic technology is not sufficient for eligibility
Merely facilitating a fundamental economic practice using generic technology is not sufficient to render the claims patent eligible. Here, for example, using a generic computer to simultaneously display a plurality of positive credit decisions was found to be...
UNWIRED PLANET, LLC v. APPLE INC. (Fed. Cir. 2016) (P) – Descriptions only tangentially related to characterizing “the present invention” are not limiting per se
Descriptions that are only tangentially related to characterizations of “the present invention” should not be read as constituting a mandatory claim limitation to be read into the claims. Here, for example, a statement about the “present invention” in the first...
WBIP, LLC v. KOHLER CO. (Fed. Cir. 2016) (P) – The claimed combination as a whole can serve as a nexus for objective indicia of non-obviousness
The claimed combination as a whole can serve as a nexus between the claimed invention and any objective indicia of non-obviousness. Here, for example, the nexus was found to be provided by the combination of a prior art automobile engine and cooling modifications for...
SHORTRIDGE v. FOUNDATION CONSTRUCTION (Fed. Cir. 2016) (NP) – Computer-implemented data processing achieving super-human results does not constitute an inventive concept
Computer-implemented data processing to achieve super-human results does not constitute an inventive concept under Alice/Mayo step two. Here, for example, a computer-implemented business method for processing certified payroll records was found to lack an inventive...
MEDICINES COMPANY v. HOSPIRA, INC. (Fed. Cir. 2016) (P, en banc) – Manufacturing services by a supplier does not trigger an on sale bar under 35 U.S.C. § 102(b)
The mere sale of manufacturing services by a contract manufacturer to an inventor to create embodiments of a patented product for the inventor does not constitute a “commercial sale” of the invention. Here, for example, no on sale bar was found to be triggered by the...
RAPID LITIGATION MANAGEMENT v. CELLZDIRECT, INC. (Fed. Cir. 2016) (P) – A claim is not merely “directed to” a law of nature if the end result of the process is new and useful
A claim is not merely “directed to” a law of nature under Alice step one if the end result of the process is new and useful. Here, for example, claims reciting a new and useful laboratory technique for preserving hepatocyte liver cells were found to be patent-eligible...
IN RE LF CENTENNIAL LIMITED (Fed. Cir. 2016) (NP) – A common but generic characteristic shared between elements does not support a conclusion of equivalence
A common but generic characteristic shared by a claim element and a prior art element does not support even a broadest reasonable interpretation that one can be the other. Here, for example, a “spine” and a “side panel” of a TV console were found to be distinct even...
BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC (Fed. Cir. 2016) (P) – An “inventive concept” can be found in a non-conventional arrangement of known, conventional pieces
An “inventive concept” establishing subject matter eligibility can be found in a non-conventional and non-generic arrangement of otherwise known, conventional pieces. Here, for example, an inventive concept was found in the installation of an Internet-content...
IMMERSION CORPORATION v. HTC CORPORATION (Fed. Cir. 2016) (P) – Filing a continuation application on the same day as its parent application issues does not defeat priority
Filing a continuation application on the same day as its parent application issues is sufficient to satisfy the “before the patenting” requirement for claiming priority under 35 U.S.C. § 120. Here, for example, the fact that the patent being asserted was filed on the...
CUOZZO SPEED TECHNOLOGIES, LLC V. LEE (S. Ct. 2016) (P) – The decision to institute IPR is non-appealable and the broadest reasonable interpretation is acceptable
The PTO’s decision to institute an inter partes review is generally non-appealable, at least “where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes...