GATOR TAIL, LLC v. MUD BUDDY LLC (Fed. Cir. 2015) (NP) – Merely espousing the benefits of its own invention over the state of the art does not teach away

by Steve Driskill | Jun 22, 2015 | [sub] teaching away, Obviousness

Merely espousing the benefits of its own invention over the state of the art is not sufficient for a prior art reference to teach away from combination with certain aspects of the state of the art. Here, for example, a short-tail mud motor with a vertically mounted...

TOMTOM, INC. v. ADOLPH (Fed. Cir. 2015) (P) – A portion of a claim preamble being a limitation does not require the entire preamble to be a limitation

by Steve Driskill | Jun 19, 2015 | [sub] preamble, Claim Interpretation

The fact that a portion of a claim preamble may be interpreted as a constituting a limitation does not require that the entire preamble constitute a limitation. Here, for example, the preamble “method for [a] generating and updating data for use in [b] a destination...

TEVA PHARMACEUTICALS USA v. SANDOZ INC. (Fed. Cir. 2015) (P) – Prosecution history estoppel applies regardless of the scientific accuracy of the statements made

by Steve Driskill | Jun 18, 2015 | [sub] prosecution history, Estoppel / Disclaimer

A statement made during prosecution may be used to define a claim term regardless of the scientific accuracy of that statement. Here, for example, in response to identical indefiniteness rejections in separate child applications regarding the claim term “molecular...

MICROSOFT CORPORATION v. PROXYCONN, INC. (Fed. Cir. 2015) (P) – Substitute claims submitted during IPR must be shown patentable over all the prior art of record

by Steve Driskill | Jun 16, 2015 | [sub] inter partes review, PTO Procedure

A patentee may be required to show that substitute claims submitted during IPR are patentable over the prior art of record, including prior art that was not part of the original bases of unpatentability for which review of the claims being substituted was instituted....

ACME SCALE COMPANY, INC. v. LTS SCALE COMPANY, LLC (Fed. Cir. 2015) (NP) – Broadest reasonable interpretation must be consistent with the subspecies disclosed in the specification

by Steve Driskill | Jun 10, 2015 | [sub] broadest reasonable interpretation, Claim Interpretation

The broadest reasonable interpretation rubric employed by the PTO must be consistent with the subspecies of the element at issue as disclosed in the specification. Here, for example, a table with rollers attached thereto was found to fall outside of the claimed...