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.
OUTSIDE THE BOX v. TRAVEL CADDY (Fed. Cir. 2012) (NP) – Inequitable conduct & small entity status
(1) While there may be some leeway in alerting the PTO of related litigation, such as here when validity was not (yet) an issue in the litigation, it’s still probably best practice to err on the side of caution. (2) Although the court did not say this flat out, a...
IN RE DROGE (Fed. Cir. 2012) (P) – Inventor declarations
This was a fairly fact specific analysis, but I think one takeaway of note is that an inventor’s own declaration is usually given less weight than that of a more neutral party. It is also another cautionary tale about how an inventor’s own work can be used against...
LASERFACTURING v. OLD CARCO (Fed. Cir. 2012) (NP) – Overly specific claim terms
There is a difference between impermissibly importing the specification’s limitations or preferred embodiments into the claims and simply giving meaning to the claim terms as they are used throughout the specification. In this case, while it is true that there was...
1ST MEDIA v. ELECTRONIC ARTS (Fed. Cir. 2012) (P) – Inequitable conduct
Knowledge of the reference and knowledge of materiality alone are insufficient after Therasense to show an intent to deceive. Moreover, it is not enough to argue “carelessness, lack of attention, poor docketing or cross-referencing, or anything else that might be...
REMBRANDT TECH v. CABLEVISION (Fed. Cir. 2012) (NP) – Importing limitations from the specification
Another reminder to avoid characterizing the “invention” itself, as opposed to certain “embodiments” of the invention. The courts have repeatedly warned against confining claims to a particular embodiment and the need to avoid importing limitations from the...
TEXTRON INNOVATIONS INC. v. AMERICAN EUROCOPTER CORP. (Fed. Cir. 2012) (NP) – Preamble limitations & DOE disavowal
If “the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or...
K-TEC, INC. v. VITA-MIX CORP. (Fed. Cir. 2012) (P) – Analogous art
To qualify as prior art for an obviousness analysis, a reference must qualify as “analogous art,” i.e., it must satisfy one of the following conditions: (1) the reference must be from the same field of endeavor; or (2) the reference must be reasonably pertinent to the...
MIRROR WORLDS, LLC. v. APPLE INC. (Fed. Cir. 2012) (P) – Doctrine of equivalents & proving inducement
Take care to avoid claiming unnecessary elements – the test for establishing infringement under the doctrine of equivalence cannot be satisfied by a theory that would entirely vitiate a particular claim element (the all-elements rule). Background / Facts: Despite a...
SANTARUS, INC. v. PAR PHARMACEUTICAL, INC. (Fed. Cir. 2012) (P) – Negative limitation support
Others have suggested that this holding raises the bar for showing support for negative limitations by requiring an explicit “reason to exclude” the limitation. My understanding in reading the opinion was just the opposite – that even when there is no literal support...
AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. (Fed. Cir. 2012) (P, en banc) – Divided infringement
Method claims just got more valuable and harder to evade infringement liability. To prove induced infringement, it is no longer necessary that the claimed steps be performed by a single entity. (The single entity requirement still exists for direct infringement...