HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. (Fed. Cir. 2016) (P) – Boilerplate disclaimers purporting to limit the specification to preferred embodiments will be ineffective

by Steve Driskill | May 12, 2016 | [sub] importing limitations, Claim Interpretation

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

by Steve Driskill | May 12, 2016 | [sub] Alice step one, Subject Matter Eligibility

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

by Steve Driskill | May 9, 2016 | [sub] inter partes review, PTO Procedure

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

by Steve Driskill | Apr 26, 2016 | [sub] reexamination, PTO Procedure

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

by Steve Driskill | Apr 25, 2016 | [sub] importing limitations, Claim Interpretation

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...