Case Updates

The following excerpts were presented in previous CASE UPDATES:

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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