BAMBERG v. DALVEY (Fed. Cir. 2016) (P) – Distinguishing prior art as “undesired” may limit the scope of the claims

by | Mar 9, 2016 | [sub] specification, [sub] written description, Adequate Disclosure, Estoppel / Disclaimer

Distinguishing the prior art as “undesired” is equivalent to distinguishing it as “inferior” and may therefore limit the scope of the claims as necessarily excluding the undesired features. Here, for example, a broad claim added during an interference to cover a...

EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, INC. (Fed. Cir. 2016) (P) – The ordinary meaning of a claim term cannot be completely untethered to the context of the invention

by | Feb 29, 2016 | [sub] importing limitations, Claim Interpretation

The ordinary meaning of a claim term cannot be completely untethered to the context of the invention. Here, for example, the claim terms “portable” and “mobile” were found to not cover everything utility meters attached to the exterior walls of buildings, even though...

PPC BROADBAND, INC. v. CORNING OPTICAL COMMUNICATIONS (Fed. Cir. 2016) (P) – Inconsistent examples in the specification facilitate invalidity at the PTO without additional protection

by | Feb 22, 2016 | [sub] broadest reasonable interpretation, Claim Interpretation

Minor but inconsistent examples in the specification may facilitate invalidity by broadening claim interpretation at the PTO so as to bring in additional prior art without necessarily broadening the scope of patent protection. Here, for example, although the...

SECURE WEB CONFERENCE CORP. v. MICROSOFT CORPORATION (Fed. Cir. 2016) (NP) – Touting a characteristic of a claimed feature as advantageous without counterexamples renders it essential

by | Feb 17, 2016 | [sub] specification, Estoppel / Disclaimer

Repeatedly touting a particular characteristic of a claimed feature as being advantageous without providing any broader embodiments reinforces that characteristic as essential. Here, for example, a “security device” was found to be limited to a stand-alone device that...

DRIESSEN v. SONY MUSIC ENTERTAINMENT (Fed. Cir. 2016) (NP) – The term “storing” requires not only holding an object but also putting it into storage in the first place

by | Feb 10, 2016 | [sub] common terms, Claim Interpretation

Unless dictated otherwise by context, the term “storing” requires not only holding an object but also putting it into storage in the first place. Here, for example, means for “storing” a record on or in a physical medium was found to require a structure for not only...