Case Updates

The following excerpts were presented in previous CASE UPDATES:

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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