GAMMINO v. SPRINT COMMUNICATIONS COMPANY (Fed. Cir. 2014) (NP) – Prosecution statements characterizing all elements of a set preclude enforcement against a subset

by Steve Driskill | Aug 15, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Repeated and unqualified statements in the prosecution history that the claimed invention treats all elements of a set in a certain manner may preclude enforcement against a system that selectively operates on a subset of those elements. For example, as here, stating...

IN RE INDEX SYSTEMS, INC. (Fed. Cir. 2014) (NP) – Market pressure may render each of a set of finite solutions obvious to try

by Steve Driskill | Aug 11, 2014 | [sub] motivation, Obviousness

When there is “a design need or market pressure to solve a problem” and there are only “a finite number of identified, predictable solutions to that problem,” all such solutions are likely obvious under an obvious-to-try rationale. For example, when there is a...

ALBECKER v. CONTOUR PRODUCTS, INC. (FL) (Fed. Cir. 2014) (NP) – Use of disjunctive “or” in describing set of features may imply that the features are alternatives

by Steve Driskill | Aug 7, 2014 | [sub] specification, Estoppel / Disclaimer

Use of a disjunctive “or” in describing a set of features may be used to infer that the features are alternatives to one another. Although this may not be sufficient to establish that such alternatives are mutually exclusive in a given embodiment, it may imply that...

SCRIPTPRO, LLC v. INNOVATION ASSOCIATES (Fed. Cir. 2014) (P) – Qualifiers such as “generally” or “broadly” may avoid inference that a list of features is essential

by Steve Driskill | Aug 6, 2014 | [sub] written description, Adequate Disclosure

Although the inclusion of truly essential features may be required for a claim to satisfy the written description requirement, the court acknowledged that “[i]t is common, and often permissible, for particular claims to pick out a subset of the full range of described...

AMDOCS LIMITED v. OPENET TELECOM, INC. (Fed. Cir. 2014) (P) – Universal and advantageous embodiment features may be read Into related claim terms

by Steve Driskill | Aug 1, 2014 | [sub] specification, Estoppel / Disclaimer

Although limitations from the specification should not ordinarily be imported into the claims, “the embodiments define the outer limits of the claim term.” Thus, when a certain feature is present in all the embodiments and touted as advantageous, it may be reasonably...