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 VARMA (Fed. Cir. 2016) (P) – The indefinite article “a” cannot serve to negate an otherwise clear relationship among claim elements
The indefinite article “a” cannot serve to negate a relationship among claim elements that is otherwise made clear by context. Here, for example, the claimed “a statistical analysis request corresponding to two or more selected investments” was found to require that a...
BAMBERG v. DALVEY (Fed. Cir. 2016) (P) – Distinguishing prior art as “undesired” may limit the scope of the claims
Distinguishing the prior art as “undesired” is equivalent to distinguishing it as “inferior” and may therefore limit the scope of the claims as necessarily excluding the undesired features. Here, for example, a broad claim added during an interference to cover a...
IN RE QUEEN’S UNIVERSITY AT KINGSTON (Fed. Cir. 2016) (P) – Patent-agent privilege exists as an independent privilege from but akin to attorney-client privilege
Patent-agent privilege exists as an independent privilege from but akin to attorney-client privilege and functions to shield from discovery communications between an applicant and its patent agent that are reasonably necessary and incident to the prosecution of...
ULTIMATEPOINTER, L.L.C. v. NINTENDO CO LTD (Fed. Cir. 2016) (P) – Functional limitations in an apparatus claim are not indefinite when they recite a capability of an element
Functional limitations in an apparatus claim do not render the claim indefinite when they merely recite a capability of a given element as opposed to requiring that the function be actually performed to trigger infringement. Here, for example, “a handheld device”...
BLUE CALYPSO, LLC. v. GROUPON, INC. (Fed. Cir. 2016) (P) – (1) Mere absence of a claim term from the specification alone does not establish a lack of written description; (2) A reference available only via a personal webpage does not automatically constitute a printed publication
(1) The PTO must do more than state that a claim term is not literally recited in the specification to establish a lack of written description support for that term. Here, for example, the specification was found to adequately support the terms “endorsement tag” and...
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, INC. (Fed. Cir. 2016) (P) – The ordinary meaning of a claim term cannot be completely untethered to the context of the invention
The ordinary meaning of a claim term cannot be completely untethered to the context of the invention. Here, for example, the claim terms “portable” and “mobile” were found to not cover everything utility meters attached to the exterior walls of buildings, even though...
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. (Fed. Cir. 2016) (P) – An information disclosure statement constitutes a tacit admission that those references are analogous art
Submitting a reference to the PTO in an information disclosure statement constitutes a tacit admission that the reference is at least analogous art if not material. Here, for example, the patentee’s arguments that a cited reference was not analogous art for the...
HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. (Fed. Cir. 2016) (NP) – A well-understood tradeoff between two variables to achieve the same end-product is generally obvious
Making a well-understood tradeoff between two variables to achieve the same end-product is generally obvious. Here, for example, decreasing an annealing temperate while increasing a corresponding annealing time was found to be obvious in view of the well-known...
PPC BROADBAND, INC. v. CORNING OPTICAL COMMUNICATIONS (Fed. Cir. 2016) (P) – Broadest dictionary definition does not necessarily satisfy the broadest reasonable interpretation standard
The broadest dictionary definition of a claim term does not necessarily satisfy the broadest reasonable interpretation standard. Here, for example, the PTO’s asserted definition of a continuity member positioned to “reside around” a coaxial cable as requiring nothing...
PPC BROADBAND, INC. v. CORNING OPTICAL COMMUNICATIONS (Fed. Cir. 2016) (P) – Inconsistent examples in the specification facilitate invalidity at the PTO without additional protection
Minor but inconsistent examples in the specification may facilitate invalidity by broadening claim interpretation at the PTO so as to bring in additional prior art without necessarily broadening the scope of patent protection. Here, for example, although the...