UCB, INC. v. YEDA RESEARCH AND DEVELOPMENT (Fed. Cir. 2016) (P) – Unentered claims may prevent other claims from being interpreted to encompass the same subject matter

by Steve Driskill | Sep 8, 2016 | [sub] prosecution history, Estoppel / Disclaimer

Claims denied entry during prosecution for including new matter may prevent other claims from being later interpreted to encompass the same subject matter. Here, for example, claims directed to a particular species of cytotoxin that were rejected during prosecution...

VOCALTAG LTD. v. AGIS AUTOMATISERING B.V. (Fed. Cir. 2016) (NP) – Algorithmic structure for a means-plus-function element need not be illustrated explicitly in the drawings

by Steve Driskill | Sep 1, 2016 | [sub] corresponding structure, Means Plus Function

Algorithmic structure corresponding to a means-plus-function element need not be illustrated explicitly in the drawings when the associated text of the specification makes clear that the claimed function is contemplated. Here, for example, an algorithm illustrated in...

IN RE NATURAL ALTERNATIVES, LLC (Fed. Cir. 2016) (NP) – Similarities in manufacturing processes alone cannot negate an explicit difference with the prior art

by Steve Driskill | Aug 31, 2016 | [sub] motivation, Obviousness

Similarities in manufacturing processes alone cannot negate an explicit difference between a product in the prior art and that of the claimed invention. Here, for example, the desugared sugar beet molasses of the claimed invention was found to sufficiently distinguish...

VERITAS TECHNOLOGIES LLC v. VEEAM SOFTWARE CORPORATION (Fed. Cir. 2016) (P) – A distinguishing combination of newly added features is generally sufficient for an IPR motion to amend

by Steve Driskill | Aug 30, 2016 | [sub] inter partes review, PTO Procedure

A showing that the combination of newly added features in substitute claims for inter partes review distinguishes over the prior art is generally sufficient to satisfy the requirements of a motion to amend without addressing whether each newly added feature was...

SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC. (Fed. Cir. 2016) (P) – Original claims can provide written description support even for later added claims

by Steve Driskill | Aug 15, 2016 | [sub] written description, Adequate Disclosure

Original claims can provide written description support even for later added claims. Here, for example, the asserted claims were found to be supported by the original disclosure even though the specification focused on a narrower embodiment and even though the...