THE OHIO WILLOW WOOD COMPANY v. ALPS SOUTH, LLC (Fed. Cir. 2016) (P) – Withholding information that directly counters arguments before the PTO constitutes inequitable conduct

by Steve Driskill | Feb 19, 2016 | Inequitable Conduct

Withholding information that runs directly counter to your central arguments before the PTO constitutes inequitable conduct. Here, for example, withholding earlier letters from a competitor’s in-house counsel that would have corroborated a declaration from the...

SECURE WEB CONFERENCE CORP. v. MICROSOFT CORPORATION (Fed. Cir. 2016) (NP) – Touting a characteristic of a claimed feature as advantageous without counterexamples renders it essential

by Steve Driskill | Feb 17, 2016 | [sub] specification, Estoppel / Disclaimer

Repeatedly touting a particular characteristic of a claimed feature as being advantageous without providing any broader embodiments reinforces that characteristic as essential. Here, for example, a “security device” was found to be limited to a stand-alone device that...

NIKE, INC. v. ADIDAS AG (Fed. Cir. 2016) (P) – No heightened standard to establish patentability of IPR substitute claims over prior art not of record

by Steve Driskill | Feb 11, 2016 | [sub] inter partes review, PTO Procedure

Absent an allegation of conduct violating the duty of candor, there is no heightened standard to establish patentability of substitute claims in an inter partes review over “prior art not of record but known to the patent owner.” Here, for example, the patentee’s mere...

CONVOLVE, INC. v. COMPAQ COMPUTER CORP. (Fed. Cir. 2016) (P) – Closing the gap between PTO and court claim construction standards does not substantially alter claim scope

by Steve Driskill | Feb 10, 2016 | [sub] reexamination, PTO Procedure

Amendments bridging the gap between the PTO’s broadest reasonable interpretation standard and the court’s narrower Phillips claim construction standard do not represent a substantial alteration of claim scope. Here, for example, amendments during reexamination...

DRIESSEN v. SONY MUSIC ENTERTAINMENT (Fed. Cir. 2016) (NP) – The term “storing” requires not only holding an object but also putting it into storage in the first place

by Steve Driskill | Feb 10, 2016 | [sub] common terms, Claim Interpretation

Unless dictated otherwise by context, the term “storing” requires not only holding an object but also putting it into storage in the first place. Here, for example, means for “storing” a record on or in a physical medium was found to require a structure for not only...