Patent Prosecution Update
March 2015
Keeping Pace with Claim Construction Law: Preambles and Disclaimer Under Pacing Technologies
The Federal Circuit’s decision in Pacing Technologies, LLC v. Garmin International, Inc., No. 2014-1396 (Fed. Cir. Feb. 18, 2015), addresses a core issue that arises whenever a practitioner drafts a patent application: how broad will the resulting claims be? Pacing Technologies examined this issue from two angles. First, the Federal Circuit found the preamble of a claim to be limiting. Second, the Federal Circuit found that statements in the specification describing how “objects” of the “present invention” would be accomplished created a disclaimer of claim scope. On both scores, the Federal Circuit’s opinion provides guidance for practitioners in drafting specifications and claims to achieve a desired claim breadth. More
A Mix-up on Appeal: The Prior Art’s Principle of Operation or Intended Purpose Matters in Obviousness Analysis
In the quest to invalidate patent claims, many patent practitioners have found themselves in possession of a base reference requiring the change of an element or two from a teaching reference to arrive at what appears to be a viable combination. Such was the case in the unpublished Federal Circuit case of Plas-Pak Industries, Inc. v. Sulzer Mixpac AG, No. 2014-1447 (Fed. Cir. Jan. 27, 2015). Even though this is a nonprecedential decision, it provides a useful reminder to patent practitioners that when combining references, the prior art’s principle of operation or intended purpose can be an important consideration. More
Keeping Pace with Claim Construction Law: Preambles and Disclaimer Under Pacing Technologies
The Federal Circuit’s decision in Pacing Technologies, LLC v. Garmin International, Inc., No. 2014-1396 (Fed. Cir. Feb. 18, 2015), addresses a core issue that arises whenever a practitioner drafts a patent application: how broad will the resulting claims be? Pacing Technologies examined this issue from two angles. First, the Federal Circuit found the preamble of a claim to be limiting. Second, the Federal Circuit found that statements in the specification describing how “objects” of the “present invention” would be accomplished created a disclaimer of claim scope. On both scores, the Federal Circuit’s opinion provides guidance for practitioners in drafting specifications and claims to achieve a desired claim breadth. More
A Mix-up on Appeal: The Prior Art’s Principle of Operation or Intended Purpose Matters in Obviousness Analysis
In the quest to invalidate patent claims, many patent practitioners have found themselves in possession of a base reference requiring the change of an element or two from a teaching reference to arrive at what appears to be a viable combination. Such was the case in the unpublished Federal Circuit case of Plas-Pak Industries, Inc. v. Sulzer Mixpac AG, No. 2014-1447 (Fed. Cir. Jan. 27, 2015). Even though this is a nonprecedential decision, it provides a useful reminder to patent practitioners that when combining references, the prior art’s principle of operation or intended purpose can be an important consideration. More
IP5 Offices
Preparing an IP5-Compatible Patent Application: Formalities
Read
Design Patents
Don’t Let Your Prerelease Activities Bar Your Chances for a Design Patent
Read
Rule Review
Japanese Foundation v. Lee: Miscommunication Between Attorney and Clients Insufficient to Withdraw Terminal Disclaimer
Read
EPO Practice
Patenting Human Embryonic Stem Cells in Europe
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Speeding Things Up at the EPO
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At the Federal Circuit
PTO Claim Construction Reversed Based on Usage in Specification
Read
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Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
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