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.
IN RE APPLIED MATERIALS, INC. (Fed. Cir. 2012) (P) – Obviousness of optimizations
For “result-effective” variables in which a relationship between property and effect is (at least qualitatively) known in the prior art, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the...
ELI LILLY v. APP PHARMA (Fed. Cir. 2012) (P) – Obviousness-type double patenting
The standard outlined here is specific to chemical cases where predictability is more difficult, but the court generally recognized that although a claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition...
ACTIVEVIDEO v. VERIZON COMMUNICATION (Fed. Cir. 2012) (P) – Combinability of prior art references
Several good quotes to use against the typically flimsy obviousness rationales flouted by Examiners. Some highlights include arguments against an Examiner reasoning that the proposed combination would provide only expected results (but no apparent benefit): “a...
GREENLIANT SYSTEMS v. XICOR (Fed. Cir. 2012) (P) – Rule against recapture
This case highlights another facet to the perils of prosecution history estoppel – not only can it be used against you in litigation, but it can also be used against you at the PTO if you need to broaden your claims at a later date through reissue. Remember, you are...
JANG v. BOSTON SCIENTIFIC (Fed. Cir. 2012) (NP) – Claim construction based on single embodiments
Despite the broad language cautioning against importing language into the claims based on consistent or even exclusive use in the disclosed examples, it remains good practice to include at least two examples for claim terms recited more broadly. The courts seem only...
AMKOR TECH v. ITC (Fed. Cir. 2012) (P) – Prior invention under § 102(g)(2)
For an invention conceived outside the United States, the date of conception for purposes of priority for a United States patent is the date the invention is first reported to the inventor’s agent within the United States, which may occur orally or in writing....
WHITSERVE v. COMPUTER PACKAGES (Fed. Cir. 2012) (P) – “Automatically”
The term “automatically” does not exclude all possible human intervention, and may include human actions to expressly initiate the automatic functions (e.g., querying, generating, transmitting, or receiving), or to interrupt such functions. Nevertheless, the use of...
ASSOCIATION FOR MOLECULAR PATHOLOGY v. PTO (Fed. Cir. 2012) (P) – Gene patents
At least for now, isolated human genes are patentable, although this issue seems destined for the Supreme Court. Background / Facts: The claims at issue on remand (in light of Prometheus) cover two “isolated” human genes, BRCA1 and BRCA2 (collectively, “BRCA1/2” or...
IN RE RAMBUS (Fed. Cir. 2012) (P) – Single vs. plural constructions & related application estoppel
The main lesson here is that a “device” is a broad term and may be interpreted as being composed of several constituent components, perhaps even seemingly disparate components (e.g., while the “memory device” could not include the CPU, it could include a memory...
MEYER INTELL PROP v. BODUM (Fed. Cir. 2012) (P) – Importance of apparatus claims & “providing” an element
The most obvious lesson here is the importance of apparatus claims over method claims. It is unclear why the patents at issue do not contain a single apparatus claim (I checked), but that would have seemingly overcome the whole direct vs. indirect infringement issue...