DAVID NETZER CONSULTING v. SHELL OIL COMPANY (Fed. Cir. 2016) (P) – Distinguishing the claimed invention from conventional implementations may constitute a clear disclaimer

by Steve Driskill | May 27, 2016 | [sub] prosecution history, Estoppel / Disclaimer

Distinguishing the claimed invention from conventional implementations may constitute a clear disclaimer that one or more claim limitations do not cover such conventional implementations. Here, for example, the claimed “fractionating” was found to exclude conventional...

IN RE AQUA PRODUCTS, INC. (Fed. Cir. 2016) (P) – The PTO need not evaluate unargued limitations in a motion to amend during inter partes review

by Steve Driskill | May 25, 2016 | [sub] inter partes review, PTO Procedure

The PTO need not evaluate unargued limitations in a motion to amend during inter partes review. Here, for example, the PTO’s failure to evaluate objective indicia of non-obviousness and various new limitations in certain proposed claims was found to be proper because...

BLACK & DECKER, INC. v. POSITEC USA, INC. (Fed. Cir. 2016) (NP) – No motivation to modify a prior art device in a manner that is inconsistent with its stated goals

by Steve Driskill | May 18, 2016 | [sub] motivation, Obviousness

For the purposes of establishing obviousness under 35 U.S.C. § 103, there can generally be no motivation to modify a prior art device in a manner that is inconsistent with the prior art’s stated goals. Here, for example, no motivation was found to add complexity to a...

TLI COMMUNICATIONS LLC v. AV AUTOMOTIVE, L.L.C. (Fed. Cir. 2016) (P) – Claims reciting conventional technology without addressing its problems are directed to an abstract idea

by Steve Driskill | May 17, 2016 | [sub] Alice step one, Subject Matter Eligibility

The use of conventional technology in a well-known environment that does not address any problems presented by the conventional technology is generally directed to an abstract idea under step one of the Mayo/Alice framework. Here, for example, attaching classification...

MERCK & CIE v. WATSON LABORATORIES INC. (Fed. Cir. 2016) (P) – It is not necessary that an actual sale be consummated to trigger the on-sale bar under 35 U.S.C. § 102(b)

by Steve Driskill | May 13, 2016 | [sub] offer for sale, Prior Art

While an offer for sale must qualify as a commercial offer under the law of contracts to trigger the on-sale bar under 35 U.S.C. § 102(b), it is not necessary that an actual sale ever be consummated. Here, for example, a fax detailing price and delivery terms,...