IN RE CSB-SYSTEM INTERNATIONAL, INC. (Fed. Cir. 2016) (P) – The PTO must apply the Phillips standard for claim construction whenever a patent expires

by | Aug 9, 2016 | [sub] broadest reasonable interpretation, Claim Interpretation

The PTO must apply the Phillips standard for claim construction whenever a patent expires, even in the middle of proceedings that had previously used the broadest reasonable interpretation standard. Here, for example, the Board’s continued use of the broadest...

RESPIRONICS, INC. v. ZOLL MEDICAL CORPORATION (Fed. Cir. 2016) (NP) – Unclaimed elements essential for operation of the claimed invention need not necessarily be claimed

by | Jul 29, 2016 | [sub] broadest reasonable interpretation, Claim Interpretation

Unclaimed elements that are essential for operation of the claimed invention need not necessarily be claimed. Here, for example, information about how “patient compliance data” was obtained for the claimed recording of such information was found to be permissibly...

IN RE MAGNUM OIL TOOLS INTERNATIONAL (Fed. Cir. 2016) (P) – The burden of proof does not automatically shift to the patent owner as soon as the PTO institutes an IPR

by | Jul 25, 2016 | [sub] inter partes review, PTO Procedure

The burden of proof does not automatically shift between the petitioner and the patent owner as soon as the PTO institutes an inter partes review. Here, for example, the petitioner’s failure to specifically address a motivation to combine the two prior art references...

LENDINGTREE v. ZILLOW, INC. (Fed. Cir. 2016) (NP) – Merely facilitating a fundamental economic practice using generic technology is not sufficient for eligibility

by | Jul 25, 2016 | [sub] Alice step two, Subject Matter Eligibility

Merely facilitating a fundamental economic practice using generic technology is not sufficient to render the claims patent eligible. Here, for example, using a generic computer to simultaneously display a plurality of positive credit decisions was found to be...