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.
STORED VALUE SOLUTIONS, INC. v. CARD ACTIVATION TECHNOLOGIES, INC. (Fed. Cir. 2012) (NP) – Written description
The written description requirement has been consistently held to be separate from the enablement requirement. It is not enough that one skilled in the art could have made and used a particular combination of elements based on the applicant’s specification – the...
IN RE DITTO (Fed. Cir. 2012) (NP) – Patenting animals
The only thing to note here is probably just fact that the court decided to evade the question of subject matter eligibility under 35 U.S.C. § 101, deciding the case on other grounds as it has suggested doing in other instances when possible. Background / Facts: The...
RAYLON, LLC. v. COMPLUS DATA INNOVATIONS, INC. (Fed. Cir. 2012) (P) – Sanctions for unreasonable claim construction
Not much from a prosecution standpoint. However, this case does highlight the importance (read: value) of competent patent attorneys, which the plaintiff apparently did not have: “Raylon’s attorney argued that claim construction ‘is kind of [an] arcane subject that...
IN RE YAMAZAKI (Fed. Cir. 2012) (P) – Terminal disclaimers
Reissue proceedings cannot be used to withdraw a terminal disclaimer from an issued patent. The lesson here is therefore as clear as it is important – do not file a terminal disclaimer until all other issues have been resolved in the case. Ask that all...
PREGIS CORP. v. KAPPOS (Fed. Cir. 2012) (P) – Suing the PTO under the APA
A third party cannot sue the PTO under the APA to challenge a PTO decision to issue a patent. Background / Facts: Pregis filed suit against Free-Flow Packaging seeking a declaratory judgment against Free-Flow’s patents directed to air-filled cushions used to fill...
DEERE & CO. v. BUSH HOG, LLC. (Fed. Cir. 2012) (P) – Doctrine of equivalents
Although technically dicta based on the reversal of the underlying literal construction, the court went out of its way to note that “[t]he district court’s treatment of the doctrine of equivalents reveals a common misperception regarding ‘vitiation’ that warrants some...
ARCELORMITTAL FRANCE v. AK STEEL CORP. (Fed. Cir. 2012) (P) – Claim interpretation “in light of the specification”
The claims and specification should be read “in a manner that renders the patent internally consistent,” even when doing so would impart a different meaning than the ordinary and customary meaning in the art. While that worked out well for the patentee in this...
THE FOX GROUP, INC. v. CREE, INC. (Fed. Cir. 2012) (P) – Enablement of prior inventions under 35 U.S.C. § 102(g)
Public demonstration of possession of a prior invention under 35 U.S.C. § 102(g) is sufficient to demonstrate that the prior inventors did not abandon, suppress, or conceal their invention. Enabling others to reproduce the invention is not required. Background /...
REVISION MILITARY, INC. v. BALBOA MANUFACTURING CO. (Fed. Cir. 2012) (P) – Standard for preliminary injunction
While not particularly relevant for patent preparation or prosecution, the main holding here is simply that the likelihood of success in a patent case is a substantive matter, and that Federal Circuit law (which tends to be the most favorable to patentees seeking an...
INVENTIO AG. v. OTIS ELEVATOR CO. (Fed. Cir. 2012) (NP) – Obvious to try
An obvious to try rationale is generally supported when there is a finite number of identified, predictable solutions, with a reasonable expectation of success. Background / Facts: Inventio’s patent at issue was directed to an elevator “destination dispatching” system...