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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 ZHANG (Fed. Cir. 2016) (NP) – A combination of prior art references is proper even if it eliminates advantages taught by the references
A proposed combination of prior art references may be proper even if it would eliminate one or more advantages disclosed in the reference being modified. Here, for example, substituting yarn types in a fabric of the primary reference was found to be proper even though...
IN RE KAYYALI (Fed. Cir. 2016) (NP) – Conflict with mere advantages or preferences identified in the prior art does not constitute teaching away
Conflict with mere advantages or preferences identified in the prior art does not by itself constitute teaching away from a proposed combination. Here, for example, the prior art’s expressed preference for automated computer systems over trained clinicians was found...
SAS INSTITUTE, INC. v. COMPLEMENTSOFT, LLC. (Fed. Cir. 2016) (P) – Claim construction cannot be changed in an IPR final decision without an opportunity to respond
The PTO may not change its claim construction in the final written decision of an inter partes review without giving both of the parties an opportunity to respond. Here, for example, the Board’s assertion that its change in claim construction was non-prejudicial...
INDACON, INC. v. FACEBOOK, INC. (Fed. Cir. 2016) (P) – Claim differentiation does not apply where the claims are not otherwise identical in scope
The doctrine of claim differentiation does not apply where the claims are not otherwise identical in scope. Here, for example, while certain claims clearly distinguished between “instances” of text strings and “all instances” of the text strings, the claimed invention...
RUCKUS WIRELESS, INC. v. INNOVATIVE WIRELESS SOLUTIONS (Fed. Cir. 2016) (P) – Broadening statements in the specification may act as a ceiling for claim breadth
Broadening statements in the specification may act as a ceiling for claim breadth. Here, for example, the claimed “communications path” was found to be limited to wired communication at the exclusion of wireless communication because the specification, in asserting...
DAVID NETZER CONSULTING v. SHELL OIL COMPANY (Fed. Cir. 2016) (P) – Distinguishing the claimed invention from conventional implementations may constitute a clear disclaimer
Distinguishing the claimed invention from conventional implementations may constitute a clear disclaimer that one or more claim limitations do not cover such conventional implementations. Here, for example, the claimed “fractionating” was found to exclude conventional...
PROFECTUS TECHNOLOGY LLC v. HUAWEI TECHNOLOGIES CO., LTD. (Fed. Cir. 2016) (P) – Claim language that “is tailored to, characterizes, and delimits” a claim element is intrinsic requirement
Claim language that “is tailored to, characterizes, and delimits” a claim element may be interpreted as an intrinsic requirement of that element rather than expressing a mere possibility. Here, for example, specifying that the claimed picture frame / display is...
IN RE AQUA PRODUCTS, INC. (Fed. Cir. 2016) (P) – The PTO need not evaluate unargued limitations in a motion to amend during inter partes review
The PTO need not evaluate unargued limitations in a motion to amend during inter partes review. Here, for example, the PTO’s failure to evaluate objective indicia of non-obviousness and various new limitations in certain proposed claims was found to be proper because...
BLACK & DECKER, INC. v. POSITEC USA, INC. (Fed. Cir. 2016) (NP) – No motivation to modify a prior art device in a manner that is inconsistent with its stated goals
For the purposes of establishing obviousness under 35 U.S.C. § 103, there can generally be no motivation to modify a prior art device in a manner that is inconsistent with the prior art’s stated goals. Here, for example, no motivation was found to add complexity to a...
TLI COMMUNICATIONS LLC v. AV AUTOMOTIVE, L.L.C. (Fed. Cir. 2016) (P) – Claims reciting conventional technology without addressing its problems are directed to an abstract idea
The use of conventional technology in a well-known environment that does not address any problems presented by the conventional technology is generally directed to an abstract idea under step one of the Mayo/Alice framework. Here, for example, attaching classification...