Proper Obviousness Rejection Requires a Rationale for Combining Prior Art References

Posted by Emily Gardel on May 31, 2017

Emily Gardel

In In re: Van Os, the Federal Circuit maintained that in formulating an obviousness rejection, a reasoned rationale to combine references is required.

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Definitely Not Indefinite: How the Specification Can Save a Claim from Indefiniteness

Posted by Jen Wang on Feb 9, 2017

Jen Wang

In Sonix Technology v. Publications International, the Federal Circuit applied the Supreme Court’s indefiniteness standard from Nautilus and held seemingly imprecise claim language to be definite.

What This Means to You

  • During application drafting and prosecution, identify potentially vague claim terms and consider using a different term or including examples in the specification.
  • In litigation, experts opining on indefiniteness need to provide support to show that a term is subjective. A simple conclusory statement is insufficient.
  • While this case dealt with the type of indefiniteness in which a claim term seems imprecise on its face, it is also important to watch out for claims that seem precise, but involve different methods of measurement. Such claims could also be vulnerable to an indefiniteness attack.
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Federal Circuit Provides Additional Guidance for Claim Construction and Analysis of Mixed Method, Apparatus Claims

Posted by Jessica Chao on Jan 4, 2017

Jessica Chao

In LifeNet Health v. LifeCell Corp., the Federal Circuit reiterated the importance of properly preserving claim construction issues for appeal and providing specific support for claim terms and specification terms in a patent application’s written description to achieve more reasoned claim construction.

What This Means to You

  • Litigants should be mindful to raise specific claim construction disputes before and during trial in order to preserve the dispute for appeal.
  • Functional limitations defined in the negative should define a property of the recited apparatus to avoid indefiniteness for mixing method steps in an apparatus claim.
  • Claim terms should be broadly defined in the specification, include multiple embodiments and ranges for the invention, and avoid limiting language like “present invention” and “preferably” to avoid restrictive claim construction under Phillips v. AWH Corp.
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Halo v. Pulse Shifts Focus of Willful Infringement Back to Infringing Conduct

Posted by Stuart Duncan Smith on Nov 15, 2016

Stuart Duncan Smith

In patent litigation, a judge may enhance damages under 35 U.S.C. § 284 after the defendant is found to have willfully infringed. The question of willfulness was traditionally evaluated with the Seagate test. Halo Electronics, Inc. v. Pulse Electronics, Inc. changed the test for willful infringement, giving new reason to think carefully when confronted with a competitor’s patent.

What This Means to You

  • This case changed the test for willful infringement by eliminating the defense of simply formulating during litigation a reasonable argument that the patent is invalid or not infringed.
  • Under the new test, willfulness is determined based on the infringer’s conduct at the time of infringement, and so care is needed when evaluating a competitor’s patents. An early understanding about why the patents are invalid or not infringed remains an important defense against a willfulness charge.
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Federal Circuit Provides Guide to Determining Scope of Design Patents Having Functional Components

Posted by Eric Amundsen on Oct 4, 2016

Eric Amundsen

Determining the scope of a design patent claim can be challenging when functional components form part of the claim. In Sport Dimension, Inc. v. The Coleman Company, Inc., the Federal Circuit provided a guide for determining whether components of the claimed design serve a functional purpose.

What This Means to You

  • Design patents can be granted for designs having functional components
  • Structural elements serving a functional purpose will not be entirely eliminated from a design patent claim
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Unreasonable Claim Construction No Defense to Induced Infringement

Posted by Rob Jensen on Aug 31, 2016

Rob Jensen

In Warsaw Orthopedic v. NuVasive, the Federal Circuit addressed the evidence necessary to establish the “intent” requirement for induced infringement. Even though a party may not be liable for direct infringement of a patent, it may be liable for induced infringement where it encourages another to perform acts that do directly infringe the patent. This case follows on the heels of the Supreme Court’s decisions in Global-Tech and Commil.

What This Means to You

  • Draft claims to cover direct infringers.
  • Intent to induce infringement is fact-specific and will be left to the fact-finder.
  • Lack of intent is not a reliable shield to liability for induced infringement.
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Federal Circuit Defers Questions on Forum Shopping to Congress

Posted by Stuart Duncan Smith on Aug 18, 2016

Stuart Duncan Smith

Patent owners have long sought to file suit in the district court that offers the best chance of a favorable outcome, even if neither party has an established place of business in the court’s district. In In re Heartland, the Federal Circuit reaffirmed its rule tolerating so-called “forum shopping” and deferred to Congress as the appropriate entity to decide whether to rewrite the rule.

What This Means to You

  • This case affirms that a patent owner may still typically sue a company for patent infringement in any judicial district where the company’s goods are distributed.
  • This case may motivate Congress to act to curtail the practice of forum shopping, which has concentrated most patent litigation in a small handful of district courts.
  • This case presents a number of issues that the Supreme Court may wish to review.

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Federal Circuit Denies Registration of Generic Mark

Posted by Christina Licursi on Aug 1, 2016

Christina Licursi

The Federal Circuit recently affirmed the TTAB's ruling in In re Cordua Restaurants LP, finding the term CHURRASCOS (stylized) to be generic for restaurant services.

What This Means to You

This case could impact applicants attempting to register a term that is a key aspect or characteristic of the class of goods or services identified in the trademark application.

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After Enfish: TLI Court Comes to Opposite Conclusion in “Directed to” Inquiry

Posted by Ed Russavage on Jul 25, 2016

Ed Russavage

The case In re TLI Communications LLC Patent Litigation (Fed. Cir. 2016) is the first Federal Circuit case since Enfish relating to the interpretation of the Alice/Mayo test under 35 U.S.C. §101.  Unlike Enfish, the claims in TLI were found to be abstract and directed to generalized steps performed on a computer using conventional computer activity.  In particular, TLI’s claims were found to be directed to the abstract idea of “taking, organizing, classifying, and storing photographs.”

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Alice Subject Matter Eligibility: The “Directed to” Inquiry is a Meaningful Step

Posted by Matthew Grady on Jul 21, 2016

Matthew Grady

In Enfish, LLC. V. Microsoft Corp., the Federal Circuit reversed the district court’s summary judgment of invalidity under §101 (subject matter) and §102 (anticipation). In reviewing the lower court’s decision, the Federal Circuit focused analysis on the first part of the Alice Corp. test for determining patent-eligible subject matter. The Federal Circuit placed particular emphasis on the first step of the two-part test: Are the claims directed to an abstract idea? The Federal Circuit noted that the “formulation [of the test] plainly contemplates that the first step of the inquiry is a meaningful one, i.e., that a substantial class of claims are not directed to a patent-ineligible concept.” 

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Wolf Greenfield's CAFC Blog

Here, Wolf Greenfield attorneys summarize and identify key takeaways from recent patent law cases decided by the U.S. Court of Appeals for the Federal Circuit. View past case summaries here.

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.