FLEMING v. ESCORT INC. (Fed. Cir. 2014) (P) – Marketplace developments prompting reassessment of issued claims qualifies as “error” sufficient for reissue

by Steve Driskill | Dec 24, 2014 | [sub] reissue, PTO Procedure

Although a “now-regretted choice” does not meet the “error” precondition for obtaining reissue under 35 U.S.C. § 251, marketplace developments that prompt a patentee to reassess their issued claims is a “classic reason that qualifies as error” for the purposes of...

CSR, PLC v. SKULLCANDY, INC. (Fed. Cir. 2014) (NP) – PTO’s claim construction of disputed terms must be sufficiently explicit to enable appellate review

by Steve Driskill | Dec 16, 2014 | [sub] appellate, PTO Procedure

The PTO’s claim construction must be sufficiently explicit, at least as to any disputed claim term, in order to enable appellate review. Here, for example, the Board’s refusal to construe the term “threshold value” while nevertheless finding that the prior art did not...

JAPANESE FOUNDATION v. LEE (Fed. Cir. 2014) (P) – Mistake by an attorney is not sufficient grounds to withdraw a terminal disclaimer

by Steve Driskill | Dec 9, 2014 | [sub] terminal disclaimer, PTO Procedure

The existence of a mistake by an attorney, other than the type falling under § 255 or a lack of actual authority from a client, is not sufficient grounds to withdraw a terminal disclaimer. Here, for example, a miscommunication about the desire to file a terminal...

DDR HOLDINGS, LLC v. HOTELS.COM, L.P. (Fed. Cir. 2014) (P) – Claims that overcome a problem specifically arising in the realm of computer networks are patent-eligible

by Steve Driskill | Dec 5, 2014 | [sub] Alice step two, Subject Matter Eligibility

In contrast to claims that are directed to “nothing more than the performance of an abstract business practice on the Internet or using a conventional computer,” claims that are “necessarily rooted in computer technology in order to overcome a problem specifically...

TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC. (Fed. Cir. 2014) (P) – Secret section 102(g) prior art may still serve as prior art under section 103

by Steve Driskill | Dec 4, 2014 | [sub] invention by another, Prior Art

Absent the application of a statutory exception (e.g. § 103(c)), secret § 102(g) prior art may serve as prior art under § 103 for the purposes of establishing obviousness. Here, for example, the accused infringer’s prototype, which was conceived before the patented...