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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.
MERCK & CIE v. WATSON LABORATORIES INC. (Fed. Cir. 2016) (P) – It is not necessary that an actual sale be consummated to trigger the on-sale bar under 35 U.S.C. § 102(b)
While an offer for sale must qualify as a commercial offer under the law of contracts to trigger the on-sale bar under 35 U.S.C. § 102(b), it is not necessary that an actual sale ever be consummated. Here, for example, a fax detailing price and delivery terms,...
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. (Fed. Cir. 2016) (P) – Boilerplate disclaimers purporting to limit the specification to preferred embodiments will be ineffective
Boilerplate disclaimers characterizing all descriptions in the specification as being directed to preferred embodiments only will be ineffective at best, and may be problematic in establishing adequate written description support. Here, for example, statements that...
ENFISH, LLC v. MICROSOFT CORPORATION (Fed. Cir. 2016) (P) – Improvement to computer functionality is not an abstract idea under step one of the Mayo/Alice framework
Improvement to computer functionality is not an abstract idea under step one of the Mayo/Alice framework. Here, for example, claims directed to a “self-referential” logical model for a computer database were found to be sufficiently concrete rather than abstract...
INTELLIGENT BIO-SYSTEMS, INC. v. ILLUMINA CAMBRIDGE LTD. (Fed. Cir. 2016) (P) – An IPR reply brief can be ignored in its entirety if any portion thereof includes new arguments
A reply brief submitted during inter partes review proceedings can be ignored in its entirety if any portion thereof includes new arguments raised for the first time. Here, for example, a reply brief including arguments not in response to those raised in the...
IN RE GARRIDO (Fed. Cir. 2016) (NP) – Newly added claims during reexamination may be rejected for failing to comply with § 112
While rejections of original patent claims are limited to prior art grounds during reexamination, newly added claims may be rejected for failing to comply with § 112. Here, for example, the rejection of certain claims as being indefinite under 35 U.S.C. § 112, second...
U.S. ETHERNET INNOVATIONS v. ACER, INC. (Fed. Cir. 2016) (NP) – There must be a nexus between the claim language and teachings purported to define the claimed invention
There must generally be a nexus between the claim language and any teachings in the specification purported to define the claimed invention. Here, for example, the scope of the claimed “buffer memory” was found to be broader than the full-frame buffers described in...
IN RE BROWN (Fed. Cir. 2016) (NP) – A conventional machine is not sufficient to transform an abstract idea into a patent-eligible concept
Using a conventional machine in a conventional way to effectuate an otherwise abstract idea is not sufficient to transform the abstract idea into a patent-eligible concept under 35 U.S.C. § 101. Here, for example, using scissors to create a hair style selected...
IN RE MAN MACHINE INTERFACE TECH LLC (Fed. Cir. 2016) (P) – Broadest reasonable interpretation does not cover prior art explicitly disclaimed in the specification
The broadest reasonable interpretation rubric employed by the PTO does not ordinarily cover prior art implementations explicitly disclaimed in the specification. Here, for example, a hand-held remote control device claimed as being “adapted to be held by the human...
GENETIC TECHNOLOGIES LIMITED v. MERIAL L.L.C. (Fed. Cir. 2016) (P) – Combining conventional implementation of a law of nature with a mental process step is not patent eligible
Diagnostic and therapeutic method claims that combine routine and conventional physical implementation of a law of nature with a simple mental process step are not patent eligible. Here, for example, analyzing non-coding regions of a person’s genome to detect coding...
IN RE HUBBELL INCORPORATED (Fed. Cir. 2016) (NP) – A mere preference does not constitute teaching away from a proposed combination of prior art references
A mere preference that conflicts with a proposed combination of prior art references does not rise to the requisite level of discrediting or disparaging remarks necessary to establish that the prior art teaches away from the proposed combination. Here, for example,...