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# MQR - McClure, Qualey & Rodack, LLP

Intellectual Property Law

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- [Federal Circuit Invalidated Claims under 112, 2nd Paragraph](https://mqrlaw.com/federal-circuit-invalidated-claims-under-112-2nd-paragraph/) - The U.S. Court of Appeals for the Federal Circuit rendered a decision in the case of Advanced Ground Information Systems v. Life360, Inc. In this case, the Federal Circuit upheld a district court’s determination that certain claims of the asserted patents were invalid under 35 U.S.C. § 112, second paragraph (now 35 U.S.C. § 112(b))
- [Two Recent Patent Cases Decided in the U.S.](https://mqrlaw.com/two-recent-patent-cases-decided-in-the-u-s/) - The first is the case of Icon Health v. Strava. While there are a number of tedious issues resolved in the case, the significant point of the decision is the Federal Circuit’s reminder that the Patent Office MUST provide an evidentiary basis for its findings. As you know, when making rejections under 35 U.S.C. §
- [CAFC Holds that Patent Directed to Relative Placement of Inertial Sensors (for Motion Compensation) to be Patent Eligible](https://mqrlaw.com/cafc-holds-that-patent-directed-to-relative-placement-of-inertial-sensors-for-motion-compensation-to-be-patent-eligible/) - The U.S. Court of Appeals for the Federal Circuit (CAFC) delivered its decision in Thales v. United States, in which the CAFC reversed the decision of the U.S. Court of Federal Claims, which found the claims of U.S. Patent 6,474,159 to be invalid under 35 U.S.C. § 101 as being directed to patent ineligible subject
- [CAFC Holds that Prior Art which Must be Modified from its Obvious Design does not Anticipate Claim](https://mqrlaw.com/cafc-holds-that-prior-art-which-must-be-modified-from-its-obvious-design-does-not-anticipate-claim/) - The U.S. Court of Appeals for the Federal Circuit (CAFC) decided the case of In re Steven C. Chudik, which reversed Patent Office findings of anticipation. The subject matter of this case involves a patent directed to an artificial shoulder joint (implant). The implant includes a protruding surface (119), which extends into the glenoid cavity.
- [CAFC Reverses PTAB Finding of Patent Claims as Obvious](https://mqrlaw.com/cafc-reverses-ptab-finding-of-patent-claims-as-obvious/) - In Synopsis v. Atoptech, the U.S. Court of Appeals for the Federal Circuit (CAFC) overturned a decision by the Patent Trial and Appeal Board (PTAB). The PTAB had found certain patent claims to be unpatentable based on a combination of prior art references. The CAFC reversed the PTAB’s decision, stating that substantial evidence did not
- [CAFC Affirms Invalidation of Claims, Which Required Knowledge of Skilled Artisan to Supplement Omissions in Prior Provisional Application](https://mqrlaw.com/cafc-affirms-invalidation-of-claims-which-required-knowledge-of-skilled-artisan-to-supplement-omissions-in-prior-provisional-application/) - On May 21, 2018, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered the opinion in D Three Enterprises v. Sunmodo, which affirmed a summary judgment decision that invalidated patent claims, because the claims were not properly supported by a priority provisional application. Central to the District Court’s decision (affirmed by the CAFC)
- [CAFC Reverses Decision by PTAB Based on Improper Assertion of "Ordinary Creativity"](https://mqrlaw.com/cafc-reverses-decision-by-ptab-based-on-improper-assertion-of-ordinary-creativity/) - The U.S. Court of Appeals for the Federal Circuit (CAFC) again reversed a decision by the Patent Trial and Appeal Board (PTAB) of the U.S. PTO. In this matter, DSS v. Apple, the PTAB erred by relying on what it called “ordinary creativity” in its obviousness analysis, particularly because the claim limitation was not “unusually
- [CAFC Reverses PTO for Ignoring Functional Language Associated with "Coupled to" Claim Limitation](https://mqrlaw.com/cafc-reverses-pto-for-ignoring-functional-language-associated-with-coupled-to-claim-limitation/) - In In re Power Integrations, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a decision of the U.S. PTO (finding patent claims to be anticipated by prior art), based on the PTO’s excessively broad interpretation of the term “coupled to”… If you want to receive the full article please subscribe to case
- [CAFC Reverses District Court for Improper Finding of Indefiniteness](https://mqrlaw.com/cafc-reverses-district-court-for-improper-finding-of-indefiniteness/) - In BASF v. Johnson Matthey, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a district court’s finding of indefiniteness. The patent in question was directed to a catalyst system and the district court found the claim to be indefinite because the claims, as written, fail to sufficiently identify the material
- [Claims Defining System with Particular Capabilities or Function Did Not Render Patent Claim Indefinite](https://mqrlaw.com/claims-defining-system-with-particular-capabilities-or-function-did-not-render-patent-claim-indefinite/) - In Mastermine v. Microsoft, the Federal Circuit overturned a district court decision, which found patent claim indefiniteness. Specifically, the patent at issue claimed a system and methods “that allow a user to easily mine and report data maintained by a customer relationship management (CRM) application” by automatically creating an electronic worksheet that included a pivot
- [CAFC Holds that IPR Petitioner Bears the Burden of All Propositions of Unpatentability](https://mqrlaw.com/cafc-holds-that-ipr-petitioner-bears-the-burden-of-all-propositions-of-unpatentability/) - The U.S. Court of Appeals for the Federal Circuit (CAFC) rendered its en banc decision in Aqua Products v. Matal. In IPR proceedings, the PTO has imposed certain requirements on Patent Owners who try to amend claims during the IPR proceeding. Specifically, the PTO has required Patent Owners to show that the claims (as amended)
- [CAFC Vacates PTAB Finding of Obviousness - Failed to Properly Support Assertion of "Routine Optimization"](https://mqrlaw.com/cafc-vacates-ptab-finding-of-obviousness-failed-to-properly-support-assertion-of-routine-optimization/) - In In re Stepan, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered a precedential opinion, in which the CAFC vacated a decision by the Patent Trial and Appeal Board (PTAB). The underlying decision by the PTAB upheld an Examiner’s determination of obviousness, which was based on a conclusory assertion of “routine optimization.”
- [CAFC Reverses PTAB for Failing to Expressly Define Claim Term](https://mqrlaw.com/cafc-reverses-ptab-for-failing-to-expressly-define-claim-term/) - In Homeland Housewares v. Whirlpool, the U.S. Court of Appeals for the Federal Circuit (CAFC) rendered an opinion, in which CAFC reversed a decision by the Patent Trial and Appeal Board (PTAB) of the US Patent & Trademark Office, because of its failure to construe the claimed term of “predetermined settling speed.” The CAFC noted:
- [CAFC Explains What the PTO Must Find to Hold a Patent Obvious](https://mqrlaw.com/cafc-explains-what-the-pto-must-find-to-hold-a-patent-obvious/) - In Outdry v. GEOX, the U.S. Court of Appeals for the Federal Circuit (CAFC) rendered a decision, in which it upheld a finding of obviousness by the Patent Trial and Appeal Board (PTAB). The patent at issue was directed to a method for waterproofing leather, and the invention specifically defined either sewing or gluing a
- [CAFC Finds Claimed Phrase "virtually free from interference" to be Definite under 35 U.S.C. 112](https://mqrlaw.com/cafc-finds-claimed-phrase-virtually-free-from-interference-to-be-definite-under-35-u-s-c-112/) - In One-E-Way v. ITC, the Federal Circuit reversed a decision by the International Trade Commission (ITC), which invalidated patents on the basis that the phrase “virtually free from interference” rendered the claims indefinite. In the decision, the Federal Circuit reversed the ITC decision on the basis that a person of ordinary skill in the art,
- [Supreme Court Rules that Lexmark's Patent Rights in Toner Cartridges were "Exhausted"](https://mqrlaw.com/supreme-court-rules-that-lexmarks-patent-rights-in-toner-cartridges-were-exhausted/) - In Impression Prods. v. Lexmark, the U.S. Supreme Court delivered an opinion, in which the Supreme Court reversed a decision by the U. S. Court of Appeals for the Federal Circuit (CAFC). The Court found that Lexmark had exhausted its patent rights in its patented toner cartridges. The issue in question is particularly relevant to
- [CAFC Affirms Invalidation of Patent Claims because of Inadequate Written Description](https://mqrlaw.com/cafc-affirms-invalidation-of-patent-claims-because-of-inadequate-written-description/) - In Rivera v. ITC, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the ITC, which invalidated patent claims based on the specification’s failure to provide an adequate written description of the claimed invention. The patent at issue was generally directed to a coffee brewing system, and more specifically to
- [Two Recent Decisions from the U.S. Supreme Court and the Court of Appeals for the Federal Circuit](https://mqrlaw.com/two-recent-decisions-from-the-u-s-supreme-court-and-the-court-of-appeals-for-the-federal-circuit/) - First, the U.S. Supreme Court rendered a decision in TC Heartland v. Kraft Foods. The technical holding of the opinion is that the general venue statute (which has been amended to provide venue in any judicial district in which personal jurisdiction exists) did not alter the patent venue statute. Second, the CAFC rendered the decision
- [Patent Prosecution Implications from Cuozzo](https://mqrlaw.com/patent-prosecution-implications-from-cuozzo/) - As you are probably aware, the U.S. Supreme Court handed its decision this week in the Cuozzo Speed Technologies v. Lee case. The factual details of the case are not as important as the legal holding and the implications those have on patent prosecution practices. Nonetheless, I have attached a copy of that decision, as
- [Federal Circuit Reverses PTO's Claim Rejection due to Impermissibly Broad Interpretation](https://mqrlaw.com/federal-circuit-reverses-ptos-claim-rejection-due-to-impermissibly-broad-interpretation/) - On April 28, 2016, I sent out an email reporting the In re Man Machine decision from the Federal Circuit, which reversed claim rejections made by the Patent Office, which were based on an overly-broad interpretation of the claims. In a similar decision yesterday, the Federal Circuit again reversed claim rejections made by the PTO,
- [Federal Circuit Finds Method for Preserving Cells Patent-Eligible](https://mqrlaw.com/federal-circuit-finds-method-for-preserving-cells-patent-eligible/) - On Tuesday, the Federal Circuit decided another case, which may be useful to Applicants when addressing certain rejections made under 35 U.S.C. § 101. I have attached a highlighted copy of the opinion for you reference. While the underlying subject matter dealt with a patent in the life sciences area, its holding is not limited
- [Using "Configured to" Language in Patent Claims](https://mqrlaw.com/using-configured-to-language-in-patent-claims/) - Today, a patent Examiner called one of the attorneys at our office to suggest adding the language of “configured to” in front of a functional phrase in the claim. The reason that I’m bringing this to your attention is to let you know that (according to the Examiner who called today) Examiners have been instructed
- [New Post-Final Pilot Program with the U.S. PTO](https://mqrlaw.com/new-post-final-pilot-program-with-the-u-s-pto/) - Yesterday, the U.S. PTO published the attached noticed regarding its new pilot program for post-Final practice (P3 program). I have highlighted key portions of the notice. This new pilot program blends features from the current AFCP program (e.g., narrowing amendments or proposed amendments may be presented) and the pre-appeal program (the substance of the submission
- [Federal Circuit Invalidates Claims under 112, 2nd paragraph](https://mqrlaw.com/federal-circuit-invalidates-claims-under-112-2nd-paragraph/) - Late last week, the U.S. Court of Appeals for the Federal Circuit rendered the attached decision in the case of Advanced Ground Information Systems v. Life360, Inc. (I have highlighted relevant passages in the attached). In this case, the Federal Circuit upheld a district court’s determination that certain claims of the asserted patents were invalid
- [Another Federal Circuit Case Regarding Patent-Ineligible Subject Matter](https://mqrlaw.com/another-federal-circuit-case-regarding-patent-ineligible-subject-matter/) - As claim evaluation under 35 U.S.C. 101 (post Alice) is a quickly evolving area of law, I wanted to update you on the latest decision from the Federal Circuit. Yesterday, the Federal Circuit delivered the attached opinion, in which it upheld a district count determination of invalidity under 35 U.S.C. § 101. The patents in
- [Federal Circuit Decisions Relating to PTO's Conclusory Assertions](https://mqrlaw.com/federal-circuit-decisions-relating-to-ptos-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”
- [The Specification Must Support Claim Scope](https://mqrlaw.com/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
- [Federal Circuit Finds Lip-Sync Software Patents to be Patent Eligible](https://mqrlaw.com/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... If you want to
- [PTAB Decision Reversed for Applying Common Teaching as Corresponding to Different Claimed Features](https://mqrlaw.com/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
- [Federal Circuit Reverses District Court Finding of Indefiniteness](https://mqrlaw.com/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
- [Federal Circuit Rules on Prosecution Disclaimer and Indefiniteness](https://mqrlaw.com/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
- [Federal Circuit Renders Another Decision on Prosecution Disclaimer](https://mqrlaw.com/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... If you want to
- [Federal Circuit Finds Claims Patent-Eligible under Alice](https://mqrlaw.com/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
- [Federal Circuit Finds Claims Invalid for Indefiniteness](https://mqrlaw.com/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
- [Federal Circuit AGAIN Reverses PTAB Rejection for Conclusory Assertion that Combination was "Intuitive"](https://mqrlaw.com/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

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