DOME PATENT L.P. v. LEE (Fed. Cir. 2015) (P) – Preponderance of the evidence standard is the appropriate one for assessing invalidity during reexamination

by Steve Driskill | Sep 3, 2015 | [sub] reexamination, PTO Procedure

The preponderance of the evidence standard is the appropriate one for assessing invalidity during reexamination. Here, for example, the PTO found the claimed method at issue to be obvious and therefore unpatentable under a preponderance of the evidence standard even...

THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS CORPORATION (Fed. Cir. 2015) (P) – Different measurement options for a claim term may be indefinite when they produce different results

by Steve Driskill | Aug 28, 2015 | [sub] breadth, Indefiniteness

A claimed value that can be measured in several ways may be held to be indefinite rather than simply broad when the different measurements produce different results. Here, for example, a slope of strain hardening coefficient claimed within a certain range was found to...

INLINE PLASTICS CORP. v. EASYPAK, LLC (Fed. Cir. 2015) (P) – Characterization of the prior art that does not form the basis of an argued distinction is not a disclaimer

by Steve Driskill | Aug 27, 2015 | [sub] prosecution history, Estoppel / Disclaimer

Mere characterization of the prior art that does not form the basis of an argued distinction does not rise to the level of prosecution history disclaimer. Here, for example, the patentee’s characterization of the prior art as including only a single perforation line...

PROGRESSIVE CASUALTY v. LIBERTY MUTUAL (Fed. Cir. 2015) (NP) – Disclosure of a genus does not, without more, imply written description support of a particular species

by Steve Driskill | Aug 24, 2015 | [sub] written description, Adequate Disclosure

An application’s disclosure of a genus does not, without more, imply written description support of a particular species. Here, for example, a parent application’s disclosure of a “rating factor” was found to be insufficient to support a child application’s recitation...

ABT SYSTEMS, LLC v. EMERSON ELECTRIC CO. (Fed. Cir. 2015) (P) – A naturally implemented solution to a known problem is likely obvious

by Steve Driskill | Aug 19, 2015 | [sub] motivation, Obviousness

A naturally implemented solution to a known problem is likely obvious. Here, for example, a periodic fan cycle that starts with an ‘off’ period rather than an ‘on’ period following the deactivation of a main heating or cooling cycle was found to be “naturally...