CONVOLVE, INC. v. COMPAQ COMPUTER CORP. (Fed. Cir. 2016) (P) – Closing the gap between PTO and court claim construction standards does not substantially alter claim scope

by Steve Driskill | Feb 10, 2016 | [sub] reexamination, PTO Procedure

Amendments bridging the gap between the PTO’s broadest reasonable interpretation standard and the court’s narrower Phillips claim construction standard do not represent a substantial alteration of claim scope. Here, for example, amendments during reexamination...

SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION (Fed. Cir. 2016) (P) – A final IPR decision need not address claims raised in the original petition but denied review

by Steve Driskill | Feb 10, 2016 | [sub] inter partes review, PTO Procedure

A final decision in inter partes review (IPR) need not address claims raised in the original petition but denied review. Here, for example, the Board’s final decision was found to be proper even though it addressed only the claims as to which review was granted and...

TRIVASCULAR, INC. v. SAMUELS (Fed. Cir. 2016) (P) – Arguments during prosecution about ultimately discarded amendments do not constitute disclaimer

by Steve Driskill | Feb 5, 2016 | [sub] prosecution history, Estoppel / Disclaimer

Arguments concerning an amendment proposed during prosecution but not ultimately part of the issued claims do not rise to the level of prosecution history disclaimer. Here, for example, the patentee’s initial arguments and amendments clarifying that the claimed...

AVID TECHNOLOGY, INC. v. HARMONIC, INC. (Fed. Cir. 2016) (P) – A statement disclaiming a set of features does not establish disclaimer of any one feature in isolation

by Steve Driskill | Jan 29, 2016 | [sub] prosecution history, Estoppel / Disclaimer

A statement during prosecution disclaiming a set of features in concert does not establish disclaimer of any one of those features in isolation. Here, for example, the patentee’s statement during prosecution that the claimed invention does not require a central...

INDUSTRIAL TECHNOLOGY RESEARCH v. PACIFIC BIOSCIENCES (Fed. Cir. 2016) (NP) – Common ownership of a prior art reference cannot be established by later filed assignment documents alone

by Steve Driskill | Jan 29, 2016 | [sub] common ownership, Prior Art

Common ownership of a prior art reference at the time of invention cannot be established for the purposes of disqualifying that reference under § 103(c) by later filed assignment documents alone. Here, for example, an assignment of a prior art reference that occurred...