IN RE COMMONWEALTH SCIENTIFIC (Fed. Cir. 2015) (NP) – An applicant’s prosecution strategy does not bar claims that are otherwise permissible under § 135(b)(1)

by Steve Driskill | Nov 20, 2015 | [sub] interference, PTO Procedure

An applicant’s prosecution strategy does not bar claims provoking an interference that are otherwise permissible under § 135(b)(1). Here, for example, claims copied from another patent before the critical date in § 135(b)(1) but then canceled and only added-back five...

CIOFFI v. GOOGLE, INC. (Fed. Cir. 2015) (NP) – Claim differentiation applies on a limitation-by-limitation basis

by Steve Driskill | Nov 17, 2015 | [sub] claim differentiation, Claim Interpretation

Claim differentiation applies on a limitation-by-limitation basis and is not vitiated by the inclusion of additional limitations in the differentiating claim. Here, for example, a dependent claim specifying that a “web browser process” is capable of “direct” access to...

AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. (Fed. Cir. 2015) (P) – Selection of an “optimal” element is not necessarily limited to the single best such element

by Steve Driskill | Nov 16, 2015 | [sub] common terms, Claim Interpretation

While context dependent, selection of an “optimal” element is not necessarily limited to the single best such element. Here, for example, selection of “an optimal server” was found to include several potentially optimal servers from which content may be retrieved...

INPHI CORPORATION v. NETLIST, INC. (Fed. Cir. 2015) (P) – A negative limitation is supported by a description of alternative features without articulating advantages

by Steve Driskill | Nov 13, 2015 | [sub] written description, Adequate Disclosure

Negative claim limitations may be supported by the specification’s description of alternative features—even without articulating advantages or disadvantages of each feature—which can constitute a “reason to exclude” under the standard for supporting negative...

CUBIST PHARMACEUTICALS, INC. v. HOSPIRA, INC. (Fed. Cir. 2015) (P) – A certificate of correction may be used to correct a chemical structure based on later discoveries

by Steve Driskill | Nov 12, 2015 | PTO Procedure

A certificate of correction may be used to correct the chemical structure of a claimed compound based on later discoveries when the specification as a whole makes clear that the patentee nevertheless possessed the compound at the time of filing. Here, for example, the...