Author Archives mqrlaw

Federal Circuit AGAIN Reverses PTAB Rejection for Conclusory Assertion that Combination was “Intuitive”

Back in August, 2016, I sent you an email about two Federal Circuit decisions (In re Warsaw and Arendi v. Apple). I’ve attached copies of those decisions to this post for your reference. I’ve also reproduced (at bottom) the text from that email for your reference. This past week, on January 3, the Federal Circuit delivered a similar decision, again reversing a PTAB (Patent Trial and Appeal Board) conclusion of obviousness, which was based on a bare (unsupported) assertion of the combination of references was “intuitive”. The decision is In re Marcel, and I have attached a highlighted copy for your reference.

The invention at issue is directed to a touchscreen interface for a portable electronic device that allows the user to rearrange icons on the display. According to…

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Federal Circuit Finds Claims Invalid for Indefiniteness

On November 17, 2016, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered the decision in Alfred E. Mann Foundation v. Cochlear Corporation. This decision is a reminder of the importance of disclosing in a patent specification appropriate structure associated with all functional language that is claimed. In this decision, the CAFC upheld a district court finding of invalidity of claims for failing to disclose in the specification the structure for the claimed feature of…

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Federal Circuit Finds Claims Patent-Eligible under Alice

On November 1, 2016, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered a precedential decision, which is favorable to patentees. The CAFC decision reversed a district court’s finding of certain patent claims to be invalid under 35 U.S.C. § 101. A copy of the decision, with relevant portions highlighted, is attached for your reference.

The patents at issue are directed to parts of a system that is designed to solve an accounting and…

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Federal Circuit Renders Another Decision on Prosecution Disclaimer

This post is in follow-up to the email I sent you yesterday, which reported the MIT v. Shire decision from the U.S. Court of Appeals for the Federal Circuit (CAFC), which dealt with the doctrine of prosecution disclaimer. Attached is another CAFC decision that deals with the same issue, only in the…

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Federal Circuit Rules on Prosecution Disclaimer and Indefiniteness

Last Thursday, the Federal Circuit upheld a district court judgment that MIT’s patent claims were neither unenforceable under the doctrine of prosecution disclaimer, nor were they indefinite. I have attached a highlighted copy of the opinion for your reference.

Prosecution Disclaimer

The principal issue in the opinion relates to the doctrine of prosecution disclaimer. I won’t go into the details of the decision…

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Federal Circuit Reverses District Court Finding of Indefiniteness

On September 23, 2016, the U.S. Court of Appeals for the Federal Circuit (CAFC) rendered its decision in the Cox Communications, et al. v. Spring Communication et al. litigation. The issue was patent claim indefiniteness under 35 U.S.C. § 112, second paragraph. I have attached a highlighted version of this decision for you.

Significantly, the CAFC reversed a district court decision, which granted summary judgment finding claims to be indefinite because of the…

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PTAB Decision Reversed for Applying Common Teaching as Corresponding to Different Claimed Features

Yesterday, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a decision by the Patent Trial and Appeal Board (PTAB), which decision had upheld rejections made by an Examiner. The CAFC concluded that there was no substantial evidence to support the conclusion reached by the PTAB (which had adopted the findings of the Examiner in its decision). I attach a highlighted copy of this opinion.

The CAFC decision is non-precedential, which means that it does not reflect a change in the law, but the decision is…

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Federal Circuit Finds Lip-Sync Software Patents to be Patent Eligible

On September 13, 2016, the U.S. Court of Appeals for the Federal Circuit delivered an opinion, which reversed a U.S. district court decision, and found patent claims directed to a method and apparatus for automatically animating lip synchronization and facial expression to be patent eligible. This decision is very favorable for…

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The Specification Must Support Claim Scope

Yesterday, the Federal Circuit delivered the attached precedential decision in ScriptPro LLC v. Innovation Associates, dkt. 2015-1565 (Fed. Cir. August, 15, 2016). Central to this decision is whether a claim is invalid if it is broader than the embodiments described in the specification.

ScriptPro’s claims were directed to a device called a “collating unit” and an automatic dispensing system (ADS) used to store prescription containers, after a patient’s medication has been stored in the containers. The patent specification described the preference of storing prescription containers by patient-identifying information and slot availability (the storage area having “slots” for storing the prescription containers). The claims, however, did not require this…

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Federal Circuit Decisions Relating to PTO’s Conclusory Assertions

This week, the U.S. Court of Appeals for the Federal Circuit delivered two different opinions, which may be useful to Applicants during prosecution, in appropriate scenarios. Specifically, these cases are relevant where the Patent Office fails to set forth the requisite factual findings to support a rejection, or where the Patent Office substitutes “common sense” in place of evidence that should be used to support a rejection.

The first opinion (In re Warsaw Orthopedic) confirms that “The [Patent Office] cannot rely on conclusory statements when dealing with … prior art and specific claims, but must set forth the…

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