HOWMEDICA OSTEONICS CORP. v. ZIMMER, INC. (Fed. Cir. 2016) (NP) – A well-understood tradeoff between two variables to achieve the same end-product is generally obvious

by Steve Driskill | Feb 26, 2016 | [sub] motivation, Obviousness

Making a well-understood tradeoff between two variables to achieve the same end-product is generally obvious. Here, for example, decreasing an annealing temperate while increasing a corresponding annealing time was found to be obvious in view of the well-known...

PPC BROADBAND, INC. v. CORNING OPTICAL COMMUNICATIONS (Fed. Cir. 2016) (P) – Broadest dictionary definition does not necessarily satisfy the broadest reasonable interpretation standard

by Steve Driskill | Feb 22, 2016 | [sub] broadest reasonable interpretation, Claim Interpretation

The broadest dictionary definition of a claim term does not necessarily satisfy the broadest reasonable interpretation standard. Here, for example, the PTO’s asserted definition of a continuity member positioned to “reside around” a coaxial cable as requiring nothing...

ACCO BRANDS CORPORATION v. FELLOWES, INC. (Fed. Cir. 2016) (P) – It is generally obvious to try any of a finite number of arrangements of prior art elements

by Steve Driskill | Feb 22, 2016 | [sub] motivation, Obviousness

It is generally obvious to try any of a finite number of arrangements of prior art elements even if a subset of those arrangements fall outside of the claim scope at issue. Here, for example, the fact that there were only two feasible arrangements of two sensors...

THE OHIO WILLOW WOOD COMPANY v. ALPS SOUTH, LLC (Fed. Cir. 2016) (P) – Withholding information that directly counters arguments before the PTO constitutes inequitable conduct

by Steve Driskill | Feb 19, 2016 | Inequitable Conduct

Withholding information that runs directly counter to your central arguments before the PTO constitutes inequitable conduct. Here, for example, withholding earlier letters from a competitor’s in-house counsel that would have corroborated a declaration from the...

NIKE, INC. v. ADIDAS AG (Fed. Cir. 2016) (P) – No heightened standard to establish patentability of IPR substitute claims over prior art not of record

by Steve Driskill | Feb 11, 2016 | [sub] inter partes review, PTO Procedure

Absent an allegation of conduct violating the duty of candor, there is no heightened standard to establish patentability of substitute claims in an inter partes review over “prior art not of record but known to the patent owner.” Here, for example, the patentee’s mere...