IMMERSION CORPORATION v. HTC CORPORATION (Fed. Cir. 2016) (P) – Filing a continuation application on the same day as its parent application issues does not defeat priority

by Steve Driskill | Jun 21, 2016 | [sub] priority, Formal Requirements

Filing a continuation application on the same day as its parent application issues is sufficient to satisfy the “before the patenting” requirement for claiming priority under 35 U.S.C. § 120. Here, for example, the fact that the patent being asserted was filed on the...

CUOZZO SPEED TECHNOLOGIES, LLC V. LEE (S. Ct. 2016) (P) – The decision to institute IPR is non-appealable and the broadest reasonable interpretation is acceptable

by Steve Driskill | Jun 20, 2016 | [sub] inter partes review, PTO Procedure

The PTO’s decision to institute an inter partes review is generally non-appealable, at least “where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes...

IN RE ZHANG (Fed. Cir. 2016) (NP) – A combination of prior art references is proper even if it eliminates advantages taught by the references

by Steve Driskill | Jun 17, 2016 | [sub] teaching away, Obviousness

A proposed combination of prior art references may be proper even if it would eliminate one or more advantages disclosed in the reference being modified. Here, for example, substituting yarn types in a fabric of the primary reference was found to be proper even though...

IN RE KAYYALI (Fed. Cir. 2016) (NP) – Conflict with mere advantages or preferences identified in the prior art does not constitute teaching away

by Steve Driskill | Jun 14, 2016 | [sub] teaching away, Obviousness

Conflict with mere advantages or preferences identified in the prior art does not by itself constitute teaching away from a proposed combination. Here, for example, the prior art’s expressed preference for automated computer systems over trained clinicians was found...

SAS INSTITUTE, INC. v. COMPLEMENTSOFT, LLC. (Fed. Cir. 2016) (P) – Claim construction cannot be changed in an IPR final decision without an opportunity to respond

by Steve Driskill | Jun 10, 2016 | [sub] inter partes review, PTO Procedure

The PTO may not change its claim construction in the final written decision of an inter partes review without giving both of the parties an opportunity to respond. Here, for example, the Board’s assertion that its change in claim construction was non-prejudicial...