WILLIAMSON v. CITRIX ONLINE, LLC (Fed. Cir. 2014) (P) – (1) Terms of mere preference such as “preferably” and “exemplary” indicate that a feature is not required & (2) the term “module” connotes either hardware or software structure and is not a nonce word per se

by Steve Driskill | Nov 5, 2014 | [sub] importing limitations, [sub] invocation, Claim Interpretation, Means Plus Function

(1) Terms of mere preference such as “preferably” and “exemplary” may be used in the specification to indicate that a particular feature is not required. Here, for example, the disclosure of an “exemplary” display that “preferably” depicts a classroom map was found to...

PRESIDENT & FELLOWS OF HARVARD v. LEE (Fed. Cir. 2014) (NP) – A terminal disclaimer that purports to attach to all child applications will be honored

by Steve Driskill | Oct 29, 2014 | [sub] obviousness-type, [sub] terminal disclaimer, Double Patenting, PTO Procedure

A terminal disclaimer that purports to attach to all child applications will be honored. Here, for example, a terminal disclaimer in a parent application stating that it attaches to “any application which is entitled to the filing date of this application under 35...

IN RE TAYLOR MADE GOLF CO. (Fed. Cir. 2014) (NP) – Common knowledge to be considered for obviousness even if not known for invention’s specific purpose

by Steve Driskill | Sep 30, 2014 | [sub] motivation, Obviousness

Limitations that are common knowledge must be considered as part of the obviousness analysis even if the prior art does not disclose them for the specific purpose of the invention. Here, for example, the fact that press fitting as a means of attachment was common...

EMD MILLIPORE CORPORATION v. ALLPURE TECHNOLOGIES, INC. (Fed. Cir. 2014) (P) – Broadening amendments do not preclude prosecution history estoppel for other narrowing amendments

by Steve Driskill | Sep 30, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Broadening amendments in conjunction with narrowing amendments do not preclude the presumption that prosecution history estoppel applies. Here, for example, broadening a use requirement for a particular transfer member element did not preclude the presumption that...

AMERICAN CALCAR, INC. v. AMERICAN HONDA MOTOR CO. (Fed. Cir. 2014) (P) – Materiality for inequitable conduct applies to even state of the art obviousness references

by Steve Driskill | Sep 26, 2014 | Inequitable Conduct

For inequitable conduct purposes, even prior art representing the state of the art without the core inventive concept can be “but for” material if the core inventive concept is found to be obvious, and all relevant operational details (beyond mere existence alone)...