SOLVAY, S.A. v. HONEYWELL INTERNATIONAL (Fed. Cir. 2014) (P) – Invention conceived by a foreign inventor and reduced to practice in the U.S. as prior art under § 102(g)(2)

by Steve Driskill | Feb 12, 2014 | [sub] invention by another, Prior Art

The doctrine of inurement, defining when the activities of others inure to the benefit of an inventor, does not require that the prior inventor under § 102(g)(2) expressly request or direct a non-inventor reducing the invention to practice to perform the reductive...

TEMPO LIGHTING, INC. v. TIVOLI, LLC (Fed. Cir. 2014) (P) – Prosecution history in claim interpretation at the PTO & third-party requester cross-appeals

by Steve Driskill | Feb 10, 2014 | [sub] broadest reasonable interpretation, [sub] reexamination, Claim Interpretation, PTO Procedure

(1) Prosecution history serves as intrinsic evidence for purposes of claim construction even “in construing patent claims before the PTO,” such that an “examiner err[s] by resorting to extrinsic evidence that [is] inconsistent with the more reliable intrinsic...

PFIZER INC. v. TEVA PHARMACEUTICALS USA (Fed. Cir. 2014) (NP) – Clearly distinguishing specific examples from the claimed invention at large

by Steve Driskill | Feb 6, 2014 | [sub] importing limitations, Claim Interpretation

It is helpful to clearly distinguish any specific examples given in the specification from the claimed invention at large to avoid conflating the narrower examples with the more generic claim language. For example, the reporting of test results only directed to a...

ENOCEAN GMBH v. FACE INTERNATIONAL CORP (Fed. Cir. 2014) (P) – Means-plus-function interpretation of and priority disclosure requirements for a “receiver”

by Steve Driskill | Jan 31, 2014 | [sub] invocation, [sub] priority, Formal Requirements, Means Plus Function

A “receiver” is reasonably well understood in the art as a name for a structure which performs the recited function. “The term ‘receiver’ (i.e., [in] the absence of the term means) presumptively connotes sufficiently definite structure to those of skill in the art” to...

REALTIME DATA, LLC v. MORGAN STANLEY (Fed. Cir. 2014) (NP) – Ambiguity as a basis for lack of written description

by Steve Driskill | Jan 27, 2014 | [sub] written description, Adequate Disclosure

At its heart, this case appears to be a cautionary tale of ambiguity being used against the drafting party (in this case, the patentee who is responsible for the content of its application). At the very least, original claim terminology should be consistent with the...