NAUTILUS, INC. v. BIOSIG INSTRUMENTS, INC (S. Ct. 2014) (P) – Standard for indefiniteness

by Steve Driskill | Jun 2, 2014 | Indefiniteness

A claim limitation is indefinite if, read in light of the specification delineating the patent, and the prosecution history, it fails to inform, with “reasonable certainty,” those skilled in the art about the scope of the invention. This “reasonably certainty”...

K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC (Fed. Cir. 2014) (P) – Assertion of common knowledge that a limitation is well-known

by Steve Driskill | May 27, 2014 | [sub] examination, PTO Procedure

The PTO is required to produce factual evidence to show that a given limitation is known in the art. Although “an assessment of basic knowledge and common sense” may factor into the obviousness rationale for making a proposed combination of known elements, such...

SUFFOLK TECHNOLOGIES, LLC v. AOL INC. (Fed. Cir. 2014) (P) – Internet forum postings as prior art

by Steve Driskill | May 27, 2014 | [sub] printed publications, Prior Art

While a printed publication must be sufficiently disseminated to qualify as prior art under 35 U.S.C. § 102, it “need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.” Thus, as here, even a non-indexed and...

TOBINICK v. OLMARKER (Fed. Cir. 2014) (P) – Conflicting descriptions for written description requirement

by Steve Driskill | May 19, 2014 | [sub] written description, Adequate Disclosure

An application need only reasonably convey to one skilled in the art that the inventor had possession of at least one embodiment that meets the claim limitations at issue to satisfy the written description requirement of 35 U.S.C. § 112(a). Conflicting descriptions...

INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC. (Fed. Cir. 2014) (P) – Requirement for an explicit obviousness rationale

by Steve Driskill | May 9, 2014 | [sub] motivation, Obviousness

To establish a prima facie case of obviousness under 35 U.S.C. § 103, it is not sufficient to show that the references are like separate pieces of a simple jigsaw puzzle. An explicit reason or motivation must be established for one of ordinary skill in the art at the...