PROLITEC, INC. v. SCENTAIR TECHNOLOGIES, INC. (Fed. Cir. 2015) (P) – Proposed amendments during IPR must establish patentability over prior art from original prosecution

by Steve Driskill | Dec 4, 2015 | [sub] inter partes review, PTO Procedure

A patentee’s burden on a motion to amend its claims during IPR includes the burden to show patentability over prior art from the patent’s original prosecution history. Here, for example, the patentee’s motion to amend was denied because it did not address the...

CARDSOFT, LLC v. VERIFONE INC. (Fed. Cir. 2015) (P) – Claim terms used in same way as conventional systems will be interpreted to require all associated standard features

by Steve Driskill | Dec 2, 2015 | [sub] extrinsic evidence, Claim Interpretation

A claim term used in exactly the same way as in conventional systems will be interpreted to require all the standard features thereof. Here, for example, the claimed “virtual machine” was interpreted as requiring the typical limitation of conventional “virtual...

IN RE HILL-ROM SERVICES, INC. (Fed. Cir. 2015) (NP) – A challenge to a Board decision as constituting a “new ground of rejection” must be raised in rehearing

by Steve Driskill | Dec 2, 2015 | [sub] appellate, PTO Procedure

The PTO’s rule requiring that any challenge to a Board decision as constituting a “new ground of rejection” must be raised in a request for rehearing to preserve it for review by the court system is not unreasonable and is in accordance with the principles of...

MCM PORTFOLIO LLC v. HEWLETT-PACKARD COMPANY (Fed. Cir. 2015) (P) – Inter partes review (IPR) does not violate Article III or the Seventh Amendment of the U.S. Constitution

by Steve Driskill | Dec 2, 2015 | [sub] inter partes review, PTO Procedure

The IPR system is a viable administrative procedure in so far as it does not violate Article III or the Seventh Amendment of the U.S. Constitution. Background / Facts: The patent on appeal here from rejection at the PTO during inter partes review (IPR) proceedings is...

STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. (Fed. Cir. 2015) (P) – Unambiguous plain meaning of a claim limitation is controlling over other descriptions in the specification

by Steve Driskill | Nov 25, 2015 | [sub] importing limitations, Claim Interpretation

Absent clear redefinition or disavowal, the plain meaning of a claim limitation will be controlling over other descriptions in the specification when the plain meaning is unambiguous. Here, for example, a “query” concerning the online status of other network devices...