ALCON RESEARCH, LTD. v. BARR LABORATORIES, INC. (Fed. Cir. 2014) (P) – Enablement over broad range of variables and parameters

by Steve Driskill | Mar 18, 2014 | [sub] enablement, Adequate Disclosure

The fact that the claims encompass many variables and parameters does not by itself require undue experimentation. Adjusting variables may be relevant to optimizing a given implementation, but optimization may not be required in order to practice the claimed invention...

VEDERI, LLC v. GOOGLE, INC. (Fed. Cir. 2014) (P) – Required consideration of all claim terms

by Steve Driskill | Mar 14, 2014 | [sub] claim context, Claim Interpretation

All words in a claim must be given due consideration. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Background / Facts: The patents being asserted here relate to methods for creating synthesized...

BOSE CORPORATION v. SDI TECHNOLOGIES, INC. (Fed. Cir. 2014) (NP) – Physical vs. paper relationships among claim components

by Steve Driskill | Mar 14, 2014 | [sub] claim context, Claim Interpretation

On the one hand, this is a good case to cite during prosecution when facing a broadest reasonable interpretation based on the examiner drawing an arbitrary box around certain components in the prior art and labeling that box with the name of the claim element at...

E2INTERACTIVE, INC. v. BLACKHAWK NETWORK, INC. (Fed. Cir. 2014) (NP) – Prosecution disclaimer based on argued dstinctions over the prior art

by Steve Driskill | Mar 12, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Unambiguously arguing that the claimed invention is allowable over certain prior art because the prior art fails to disclose a particular feature implies that this feature is a required part of the claimed invention, and is sufficient to satisfy the clear and...

ANCORA TECHNOLOGIES, INC. v. APPLE, INC. (Fed. Cir. 2014) (P) – Inaccurate examiner statements and the sliding scale of claim term disclaimer

by Steve Driskill | Mar 3, 2014 | [sub] prosecution history, [sub] specification, Estoppel / Disclaimer

For disclaimer to attach to a given claim term, there must be a clear and unmistakable disavowal of claim scope by the applicant. Comments by other parties, such as the examiner in his or her reasons for allowance, are not by themselves sufficient to rise to the level...