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.
MAGSIL CORP v. HITACHI GLOBAL (Fed. Cir. 2012) (P) – Enablement
This is a cautionary tale about choosing broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage. In general, I think it highlights the problems associated with claims that attempt to directly recite the result to...
KINETIC CONCEPTS v. SMITH & NEPHEW (Fed. Cir. 2012) (P) – Motivation to combine
Taking into account the implied factual findings, the court went through the full Graham-Deere analysis on this one, but I found the motivation to combine discussion the most relevant and useful for prosecution. In particular, the CAFC found that (the jury implicitly...
LINGAMFELTER v. KAPPOS (Fed. Cir. 2012) (NP) – Teaching away / inoperability
When arguing that a reference teaches away from the proposed combination or would render the prior art reference being modified inoperable for its intended purpose, try to cover all of your bases. While it is natural to define the purpose of a prior art invention...
ALCON RESEARCH v. APOTE (Fed. Cir. 2012) (P) – Motivation to combine
In a post-KSR world, one of ordinary skill in the art is more clever than he used to be. This case is a reminder that motivation to combine or modify a reference, while required to show obviousness, need not be found expressly in the cited art. Any rational motivation...
INTERDIGITAL COMMUNICATIONS v. ITC (Fed. Cir. 2012) (P) – Claim differentiation
The patentee may have gotten away with one here when they failed to provide alternative embodiments in the specification for a broad claim term. It is always good practice to provide multiple examples in the specification for every term you claim more broadly, and...
01 COMMUNIQUE LAB v. LOGMEIN (Fed. Cir. 2012) (P) – Singular vs. plural claim constructions
I found the most interesting discussion to be about the interpretation of definite and indefinite articles. The court explained that “[a]s a general rule, the words ‘a’ or ‘an’ in a patent claim carry the meaning of ‘one or more.’ … The exceptions to this rule are...
GROBER v. MAKO PRODUCTS (Fed. Cir. 2012) (P) – Prosecution history estoppel
I think the big picture lesson here is twofold: (1) avoid saying more than is necessary to distinguish over the art, and (2) try to limit your characterizations to the art itself rather than the claimed invention. The patentee in this case did just that and no...
IN RE ANTOR MEDIA CORP. (Fed. Cir. 2012) (P) – Enablement of prior art for anticipation
Patents, patent publications, and even non-patent printed publications are presumptively enabling for anticipation purposes, for all claimed as well as unclaimed subject matter. To make a successful showing of non-enablement and shift the burden back to the PTO to...
BANCORP SERVICES v. SUN LIFE (Fed. Cir. 2012) (P) – Patent eligibility of computer-implemented inventions
This case reinforces the unfortunate reality that there is simply no bright line rule in determining patent eligibility of computer-implemented inventions. Instead, the court seems fixated on whether the computer limitations play a “significant part” in the...
WI-LAN v. LG ELECTRONICS (Fed. Cir. 2012) (P) – Attorney/client privilege
Caution your client against sending any internal opinion letters (or internal communications generally) directly to a competitor. If that is their intention, a separate letter should be prepared for this purpose, and drafted as a public document. Background / Facts:...