FERRING B.V. v. APOTEX INC. (Fed. Cir. 2014) (P) – The term “about” should be given its ordinary and accepted meaning of “approximately”

by Steve Driskill | Aug 22, 2014 | [sub] common terms, Claim Interpretation

The term “about” should be given its ordinary and accepted meaning of “approximately” unless the patentee clearly redefines “about” in the specification. No more specific of an interpretation (e.g., a particular numerical range) is warranted by the use of this term...

AMERICAN RADIO LLC v. QUALCOMM INCORPORATED (Fed. Cir. 2014) (NP) – Interpretation of a claim term in accordance with its consistent use in specification is not improper

by Steve Driskill | Aug 22, 2014 | [sub] importing limitations, Claim Interpretation

Particularly in situations where a given claim term does not have a commonly accepted plain meaning in the art to which it pertains, consistent use of the term in the written description may be sufficient to inform its meaning without improperly importing limitations...

ABBVIE INC. v. KENNEDY INST. OF RHEUMATOLOGY (Fed. Cir. 2014) (P) – Species are unpatentable over genus when skilled artisan can envision every member of the class

by Steve Driskill | Aug 21, 2014 | [sub] motivation, [sub] obviousness-type, Double Patenting, Obviousness

Although “[i]t is well-settled that a narrow species can be non-obvious and patent eligible despite a patent on its genus,” species are unpatentable when the prior art disclosures “describe the genus containing those species such that a person of ordinary skill in the...

I/P ENGINE, INC. v. AOL INC. (Fed. Cir. 2014) (NP) – Utilizing readily available information for its intended purpose is an obvious, routine step

by Steve Driskill | Aug 15, 2014 | [sub] motivation, Obviousness

In accordance with KSR’s mandate that “[a] person of ordinary skill is … a person of ordinary creativity, not an automaton,” the court emphasized that “the obviousness inquiry must take account of the ‘routine steps’ that a person of ordinary skill in the art...

APOTEX INC. v. UCB, INC. (Fed. Cir. 2014) (P) – Manipulatively withholding information from an expert making a declaration is inequitable conduct

by Steve Driskill | Aug 15, 2014 | Inequitable Conduct

Although “[t]here is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art,” it is inequitable misconduct to “affirmatively and knowingly misrepresent[] material facts regarding the prior art.” In particular,...