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.
SUPERIOR INDUSTRIES, LLC. v. THOR GLOBAL ENTERPRISES LTD. (Fed. Cir. 2012) (P) – Claim preclusion based on trademark action
While the issue of claim preclusion is not particularly relevant for patent preparation or prosecution, it is important to note the distinction the court makes here between mere “advertising” and a true “offer for sale” sufficient to give rise to liability for patent...
EPLUS, INC. v. LAWSON SOFTWARE, INC. (Fed. Cir. 2012) (P) – Means plus function structure
This case serves as a reminder that means plus function elements really do relate only to the structure actually disclosed, not everything within the purview of one of ordinary skill. For computer-implemented means plus function elements to satisfy the test for...
PERKINELMER, INC. v. INTEMA LTD. (Fed. Cir. 2012) (NP) – Subject matter eligibility under § 101
Pre-solution data-gathering steps, even if transformative or tied to a machine, do not render an algorithm patentable. In a post-Mayo world where the lines between § 101 and § 103 blur, it is the “inventive concept” that must be patent-eligible for the claim as a...
RITZ CAMERA & IMAGE, LLC. v. SANDISK CORP. (Fed. Cir. 2012) (P) – Antitrust C/A
It’s a dangerous world for patentees and all the more important to proceed diligently at the PTO. Any impropriety in obtaining a patent may further expose the patentee to antitrust liability, including a whole new realm of possible litigants as well as treble damages....
IN RE SUTTON (Fed. Cir. 2012) (NP) – Level of skill in the art
This is another example of how attacking motivation to combine is difficult. Here, the court upheld a somewhat roundabout motivation where the claimed invention was reconstructed through the prior art for fairly ancillary purposes, and the combination then happened to...
TRANSOCEAN OFFSHORE DEEPWATER DRILLING, INC. v. MAERSK DRILLING USA, INC. (Fed. Cir. 2012) (P) – Objective evidence of nonobviousness
This is likely now the seminal case on objective evidence of nonobviousness. The court went out of its way to note that “[f]ew cases present such extensive objective evidence of nonobviousness, and thus we have rarely held that objective evidence is sufficient to...
HOR v. CHU (Fed. Cir. 2012) (P) – Inventorship
The laches period for a § 256 correction of inventorship claim begins to run when “the omitted inventor knew or should have known of the issuance of the patent,” regardless of whether the omitted inventor knew or should have known of the omitted inventorship while the...
EDWARDS LIFESCIENCES AG. v. COREVALVE, INC. (Fed. Cir. 2012) (P) – Enablement
While enablement is a fact specific inquiry and it may be difficult to take more from this case than the fact that pig testing can substitute for human testing in certain medical device technologies, it is noteworthy that the court recognized as well as sanctioned the...
JOY MM DELAWARE, INC. v. CINCINNATI MINE MACHINERY, CO. (Fed. Cir. 2012) (NP) – Best mode
Despite the seemingly clear statutory language that the written description “shall set forth” the best mode contemplated for carrying out the invention, this apparently requires only that the inventor not take any steps to “conceal” the best mode. Thus, best mode can...
TRAVEL SENTRY, INC. v. TROPP (Fed. Cir. 2012) (NP) – Divided infringement
In cases in which more than one entity performs the steps of a claimed method or process, a party is liable for direct infringement only if that party exercises “control or direction” over the performance of each step of the claim, including those that the party does...