KANEKA CORPORATION v. XIAMEN KINGDOMWAY (Fed. Cir. 2015) (P) – Lack of word-for-word alignment of specification and claims does not require use of extrinsic evidence

by Steve Driskill | Jun 10, 2015 | [sub] extrinsic evidence, Claim Interpretation

Word-for-word alignment of the specification with the claim language is unnecessary for the appropriate meaning of a claim term to be ascertained from the intrinsic record. Here, for example, although the term “sealed” tank was added to the claims during prosecution...

NOVARTIS PHARMACEUTICALS v. WATSON LABORATORIES, INC. (Fed. Cir. 2015) (NP) – Even an obvious solution does not render an invention obvious if the problem solved was previously unknown

by Steve Driskill | May 21, 2015 | [sub] motivation, Obviousness

Even an obvious solution does not render an invention obvious if the problem solved was previously unknown. Here, for example, even though the addition of the claimed “antioxidant” would have been an obvious solution for a formulation with known oxidation problems,...

APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. (Fed. Cir. 2015) (P) – The term “substantially” does not necessarily require an objective standard of measure

by Steve Driskill | May 18, 2015 | [sub] clarity, Indefiniteness

The term “substantially” does not necessarily require an objective standard of measure as long as the claim scope is reasonably certain. Here, for example, a user interface feature in which double tapping a displayed document causes it to be enlarged and...

ARCELORMITTAL FRANCE v. AK STEEL CORPORATION (Fed. Cir. 2015) (P) – Reissue amendments may be deemed impermissibly broadening in view of prior litigation claim construction

by Steve Driskill | May 12, 2015 | [sub] reissue, PTO Procedure

Amendments during reissue may be deemed broadening and thereby render a patent unenforceable if they broaden a previous and controlling claim construction from prior litigation even if the PTO’s broadest reasonable interpretation may perceive them as narrowing. Here,...

ASTRAZENECA LP v. BREATH LIMITED (Fed. Cir. 2015) (NP) – Mere regulatory compliance cannot be used to establish a nexus with commercial success

by Steve Driskill | May 7, 2015 | [sub] secondary considerations, Obviousness

A claimed feature associated with mere regulatory compliance cannot be used to establish the secondary consideration of commercial success for the purposes of rebutting an otherwise prima facie case of obviousness. Here, for example, the claimed “sterility” of a...