News & Analysis as of

Claim Construction

Anticipation Requires More Than A Reference That Discloses All The Elements

by Jones Day on

In Microsoft Corp. v. Biscotti, Inc., Nos. 2016-2080, -2082, -2083, 2017 WL 6613262 (Fed. Cir. Dec. 28, 2017), a divided Federal Circuit panel affirmed the Patent Trial and Appeal Board’s decision that Microsoft failed to...more

Patent Prosecution Word of the Day: “Infundibuliform”

Today’s Word of the Day from Wordsmith.org is “infundibuliform,” a neat word for funnel-shaped. The word has been used in at least two dozen patents and in the claims of five: 6,276,549; 4,747,343; 4,416,404; 4,288,982; and...more

Federal Circuit Review - December 2017

by Knobbe Martens on

Claims Directed to Methods for Streaming Audiovisual Data Held Unpatentable Under § 101 - In Two-Way Media Ltd v. Comcast Cable Communications, Appeal Nos. 2016-2531, 2016-2532, the Federal Circuit affirmed the district...more

Claim Drafting Strategy for Filing in the US and Europe

by Workman Nydegger on

Although obtaining a patent in Europe is similar to the process of obtaining a patent in the US, there are some important distinctions that should be considered when drafting a patent application that will be filed in both...more

New Year's Resolutions For The U.S. Patent System

by Foley & Lardner LLP on

It’s that time of year when we make resolutions to improve our health, our relationships, our careers, or other areas of our lives. I’m not starting a new diet today (although if I were, the invention described in this patent...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In both HTC v. Cellular and Microsoft v. Biscotti, the Circuit affirms rare IPR determinations that all of the claims of the patents at issue are not invalid. In Travel Sentry v. Tropp, the Circuit vacates summary judgment in...more

Anticipation Bounces Back Electronic Return Receipt Patent as Invalid

Although patentees may delight at the allowance of broad claims in their granted patents, those same claims prove more difficult to defend against invalidity arguments at trial. A recent decision from a Massachusetts court...more

Unclaimed Features Cannot Save Eligibility of Claims

by McDermott Will & Emery on

Adhering to its now-familiar two-step framework for determining patent eligibility under the Supreme Court of the United States’ 2014 decision in Alice (IP Update, Vol. 17, No. 7), the US Court of Appeals for the Federal...more

Federal Circuit Affirms Board on Claim Construction, No Anticipation, and Nonobviousness

In HTC Corp. v. Cellular Communications Equipment, LLC [2016-1880] (December 18, 2017), the Federal Circuit affirmed the Patent Trial and Appeal Board’s Final Written Decision, finding no error in the Board’s claim...more

PTAB Issues Order Proposing Claim Amendments to Patent Owner

by Knobbe Martens on

The PTAB issued an order stating that it would grant Patent Owner’s motion to amend claims upon Patent Owner accepting further claim amendments suggested by the judges in Taiwan Semiconductor Manufacturing Co. Ltd. v. Godo...more

Recap of PTAB’s “Chat with the Chief”

On December 19, 2017 the Patent Trial and Appeal Board (the “Board”) held a “Chat with the Chief” webinar in which Chief Judge David Ruschke presented very recent developments on a variety of topics related to practice before...more

When Is It Too Late to Amend an Answer to an ITC Complaint?

by Jones Day on

We recently posted about when a complainant is permitted to amend its complaint and the good cause that must be shown. Similar issues arise where a respondent wants to amend an answer without showing good cause. An order...more

No Need to be your Own Lexicographer

The word of the day for December 14 from Wordsmith.org was ensiform, meaning sword-shaped, which is a potentially useful work for patent prosecutors, and in fact has been useful to at least a few...more

District Court Considers IPR In Deciding Alice Motion

by Jones Day on

On November 20, 2017, a district court denied a defendant’s Federal Rules of Civil Procedure (“Rule”) 12(b)(6) motion that sought to dismiss the case on the ground that the asserted patents were ineligible under 35 U.S.C. §...more

D.Del. - MJ Burke Describes Analysis Framework for Assessing Section 101 Motion to Dismiss

by Fish & Richardson on

In the most recent section 101 opinion out of Delaware, Magistrate Judge Burke addressed patent eligibility of three patents directed to systems, apparatuses, and methods of using wireless machine to machine (“M2M”)...more

Obviousness v. Anticipation: That Which Doesn’t Disclose Still Could Teach

By Bryan K. Wheelock, Principal In CRFD Research, Inc., v. Matal, [2016-2198] (December 5, 2017), the Federal Circuit affirmed two Final Written Decisions invaliding claims of U.S. Patent No. 7,191,233 on user-directed...more

U.S. District Court for the District of Massachusetts Seeks Public Comment on Proposed Revisions to Local Patent Rules

by Goulston & Storrs PC on

On December 11, 2017, the Judges of the U.S. District Court for the District of Massachusetts proposed amendments to Local Rule 16.6 governing patent proceedings. The proposed amendments substantially rewrite existing Local...more

Judge Netburn Holds That a Motion for Reconsideration is Not a Vehicle for Taking a “Second Bite at the Apple”

On November 29, 2017, United States Magistrate Judge Sarah Netburn (S.D.N.Y.) denied plaintiff Seoul Viosys Co., Ltd.'s ("Seoul Viosys") motion for reconsideration of the Court's claim construction ruling....more

Federal Circuit Review - November 2017

by Knobbe Martens on

Fractured Federal Circuit Holds Patent Owner Does Not Bear Burden of Persuasion in IPR Motions to Amend - In Aqua Products, Inc. v. Matal, Appeal No. 2015-1177, the Federal Circuit, sitting en banc, held that a patent...more

When Is It Too Late to Amend an ITC Complaint?

by Jones Day on

In a recent order, Administrative Law Judge McNamara denied Complainants Advanced Micro Devices, Inc. and ATI Technologies ULC’s motion for leave to file an amended complaint to assert U.S. Patent Nos. 8,760,454 and 9,582,846...more

Federal Circuit Clarifies Probative Value of Patent Dance Statements

by Jones Day on

The Situation: The Biologics Price Competition and Innovation Act was considered in a November 2017 decision by the United States Court of Appeals for the Federal Circuit. The Result: The court found that the commercial...more

Extrinsic Evidence Makes a “Swell” Difference in Claim Construction

by McDermott Will & Emery on

Upholding a Patent Trial and Appeal Board (PTAB or Board) patentability finding, the US Court of Appeals for the Federal Circuit found that the PTAB did not err in determining the broadest reasonable construction of a claim...more

Intervening Rights Apply When There Is a Product that Infringes the Original Claim that Does Not Infringe the Amended Claim

In Presidio Components, Inc. v. American Technical Ceramics Corp. [2016-2607, 2016-2650] (November 21, 2017), the Federal Circuit affirmed the district court’s holdings that the claims are not indefinite and that American...more

Judge Matsumoto Cuts Plaintiff a Little “Slack” in Claim Construction Ruling

On November 20, 2017, United States District Court Judge Kiyo A. Matsumoto issued a claim construction ruling in a suit between two fitness-related companies: Speedfit LLC (“Speedfit”) and Woodway USA, Inc. (“Woodway”)....more

Breadth is not Indefiniteness; If the Relevant Skilled Artisan has Reasonable Certainty as to What is Covered the Claim is Not...

In BASF Corp. v. Johnson Matthey Inc., [2016-1770] (November 20, 2017), the Federal Circuit reversed the judgment of invalidity for indefiniteness of U.S. Patent No. 8,524,185, which describes and claims systems for...more

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