TRISTRATA, INC. v. MICROSOFT CORPORATION (Fed. Cir. 2014) (NP) – A borrowed term of analogy rather than a true term of art does not have a plain and ordinary meaning

by | Dec 4, 2014 | [sub] extrinsic evidence, Claim Interpretation

A borrowed term of analogy rather than a true term of art is not sufficient to establish a plain and ordinary meaning to one skilled in the particular field to which the application pertains. Here, for example, a “seal” described parenthetically for use in the field...

PAR PHARMACEUTICAL, INC. v. TWI PHARMACEUTICALS, INC. (Fed. Cir. 2014) (P) – Inherent limitations of the prior art must be commensurate in scope with the actual limitations claimed

by | Dec 3, 2014 | [sub] inherency, Anticipation

Inherent limitations of the prior art must be commensurate in scope with the actual limitations claimed in order to establish anticipation or obviousness. Here, for example, an inherent food effect advantage of nanosized formulations of a particular drug was found to...

VEHICLE IP, LLC v. AT&T MOBILITY, LLC (Fed. Cir. 2014) (NP) – Permissive language such as “may be” indicates that a certain feature is broader than the context described

by | Nov 18, 2014 | [sub] specification, Estoppel / Disclaimer

Permissive language such as “may be” indicates that a certain feature is broader than the context in which it is described. Here, for example, the specification stated that the claimed navigational way points “may be” used as intermediate points on the route, which...

WARNER CHILCOTT COMPANY, LLC v. TEVA PHARMACEUTICALS USA, INC. (Fed. Cir. 2014) (NP) – Confirming that extrapolations from known data are operational is not sufficient to preclude obviousness

by | Nov 18, 2014 | [sub] motivation, Obviousness

Merely confirming that extrapolations from known data are operational is not sufficient to preclude a conclusion of obviousness. Here, for example, a monthly dosing regimen in line with suggested but untested extrapolations from daily dosing regimens was found to be...

ANTARES PHARMA INC. v. MEDAC PHARMA INC. (Fed. Cir. 2014) (P) – Specification must “clearly and unequivocally” disclose invention claimed on reissue as a separate invention

by | Nov 17, 2014 | [sub] reissue requirements, Adequate Disclosure

The “original patent” requirement is a heightened standard compared to the separate written description requirement in that the specification must “clearly and unequivocally” disclose the particular invention claimed on reissue as a separate invention. Here, for...