DIGITECH IMAGE TECHNOLOGIES v. ELECTRONICS FOR IMAGING, INC. (Fed. Cir. 2014) (P) – Manipulating existing information to generate additional information is not by itself patentable

by Steve Driskill | Jul 11, 2014 | [sub] Alice step one, Subject Matter Eligibility

“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Tying the manipulation to an underlying data structure—even one that is technological in...

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION (Fed. Cir. 2014) (P) – Prosecution statements in unrelated applications cannot be used to interpret claims

by Steve Driskill | Jun 27, 2014 | [sub] prosecution history, Estoppel / Disclaimer

This case reaffirms Pfizer v. Ranbaxy that “statements made during prosecution of [a] later, unrelated [] patent cannot be used to interpret claims of [another] patent.” Further, because prosecution focuses on “what [a reference] discloses” whereas claim construction...

IN RE WIRTH (Fed. Cir. 2014) (NP) – Obviousness of modifying an identifier format

by Steve Driskill | Jun 12, 2014 | [sub] motivation, Obviousness

Although a fact specific inquiry, it may be obvious as here to replace the format of one type of identifier (e.g., a random but unique numerical identifier) with another type of identifier (e.g., a person’s name) when both achieve the same result (e.g., unique...

BRISTOL-MYERS SQUIBB COMPANY v. TEVA PHARMACEUTICALS USA, INC. (Fed. Cir. 2014) (P) – Post-invention discoveries do not teach away

by Steve Driskill | Jun 12, 2014 | [sub] teaching away, Obviousness

Suggestions teaching away from combining references to arrive at the claimed invention but arising after the time of the invention are irrelevant. “Obviousness, and expectation of success, are evaluated from the perspective of a person having ordinary skill in the art...

ALLERGAN, INC. v. APOTEX INC. (Fed. Cir. 2014) (P) – Specific unpredictability in the field is more Important than general

by Steve Driskill | Jun 10, 2014 | [sub] motivation, Obviousness

The relevant inquiry with regard to the level of predictability in the art is not the general unpredictability of the field of the invention at large, but rather, the more specific unpredictability of arriving at the claimed invention in particular based on the state...