SOUTH ALABAMA MEDICAL SCIENCE v. GNOSIS S.P.A. (Fed. Cir. 2015) (P) – No nexus is required between the claimed invention and a product ultimately produced under license

by Steve Driskill | Dec 17, 2015 | [sub] secondary considerations, Obviousness

The patentee need not necessarily establish an independent nexus between the products produced under a license agreement and the claimed invention for licensing activity to be a relevant secondary factor in the obviousness inquiry. Here, for example, the fact that the...

MERCK & CIE v. GNOSIS S.P.A. (Fed. Cir. 2015) (P) – The teachings of a later prior art reference outweigh contradictory statements in an earlier reference

by Steve Driskill | Dec 17, 2015 | [sub] teaching away, Obviousness

The teachings of a later prior art reference generally outweigh contradictory statements in an earlier prior art reference. Here, for example, although an earlier prior art reference clearly taught away from the claimed invention by stating that the claimed “5-MTHF”...

IN RE DISTEFANO (Fed. Cir. 2015) (P) – Origin identification does not constitute printed matter under the printed matter doctrine

by Steve Driskill | Dec 17, 2015 | [sub] printed matter, Claim Interpretation

Unless claimed directly, origin identification does not constitute printed matter under the printed matter doctrine. Here, for example, the origin of certain web design code snippets (or “assets”) recited as being “authored by third party authors” was found not to...

SIGHTSOUND TECHNOLOGIES, LLC v. APPLE INC. (Fed. Cir. 2015) (P) – Electronic sales are a financial activity that is subject to CBM review

by Steve Driskill | Dec 15, 2015 | [sub] covered business methods, PTO Procedure

The electronic sale of something, including charging a fee to a party’s account, is a financial activity that is subject to Covered Business Method (CBM) review. Here, for example, the sale of digital audio and video signals for a fee through telecommunications lines...

PROLITEC, INC. v. SCENTAIR TECHNOLOGIES, INC. (Fed. Cir. 2015) (P) – Proposed amendments during IPR must establish patentability over prior art from original prosecution

by Steve Driskill | Dec 4, 2015 | [sub] inter partes review, PTO Procedure

A patentee’s burden on a motion to amend its claims during IPR includes the burden to show patentability over prior art from the patent’s original prosecution history. Here, for example, the patentee’s motion to amend was denied because it did not address the...