Patent Prosecution Update
June 2016
Motivation to Combine and Teaching Away: Viable Tools, but with Limits
Though inter partes reexamination has faded from view in the post-AIA legal landscape, the proceedings continue to generate important precedent. In Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, No. 2015-1533 (Fed. Cir. June 15, 2016), the Federal Circuit affirmed a finding of obviousness in an inter partes reexamination. The Federal Circuit’s analysis regarding the principles of “motivation to combine” and “teaching away” supplies valuable guidance for all types of patent validity challenges. Practitioners seeking to mount or thwart a validity argument based on these principles should appreciate that, while they remain viable tools to demonstrate patentability, they receive careful scrutiny. More
The Federal Circuit Affirms: It’s OK to Be Wired at a Coffee Shop
When undertaking a patent infringement analysis, a patent owner’s first task is to construe the claims. When technology continues its march forward, the evolving state of the art can present opportunities for wider adoption of earlier-patented inventions, but can also foreclose patent enforcement if the specification does not leave room for technological alternatives. Such was the case in the Federal Circuit decision in Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, Nos. 2015-1425, -1438 (Fed. Cir. May 31, 2016). This case provides a useful reminder to patent practitioners that when drafting specifications, providing a range of exemplary alternatives can be an important consideration. More
Motivation to Combine and Teaching Away: Viable Tools, but with Limits
Though inter partes reexamination has faded from view in the post-AIA legal landscape, the proceedings continue to generate important precedent. In Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, No. 2015-1533 (Fed. Cir. June 15, 2016), the Federal Circuit affirmed a finding of obviousness in an inter partes reexamination. The Federal Circuit’s analysis regarding the principles of “motivation to combine” and “teaching away” supplies valuable guidance for all types of patent validity challenges. Practitioners seeking to mount or thwart a validity argument based on these principles should appreciate that, while they remain viable tools to demonstrate patentability, they receive careful scrutiny. More
The Federal Circuit Affirms: It’s OK to Be Wired at a Coffee Shop
When undertaking a patent infringement analysis, a patent owner’s first task is to construe the claims. When technology continues its march forward, the evolving state of the art can present opportunities for wider adoption of earlier-patented inventions, but can also foreclose patent enforcement if the specification does not leave room for technological alternatives. Such was the case in the Federal Circuit decision in Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, Nos. 2015-1425, -1438 (Fed. Cir. May 31, 2016). This case provides a useful reminder to patent practitioners that when drafting specifications, providing a range of exemplary alternatives can be an important consideration. More
IP5 Offices
Continuing Application Practice in the IP5 Offices
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Design Patents
Could a “Real” Design Solve a “Virtual” Problem? Protecting Innovative Design Against Physical or Online Infringing Products
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Rule Review
Latest Guidance to USPTO Examiners Regarding § 101 After Enfish v. Microsoft Decision
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EPO Practice
Early Certainty from EPO Oppositions
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At the Federal Circuit
Applying the Doctrine of Equivalents: Both Intrinsic and Extrinsic Evidence Can Be Relied Upon in Determining the Function of a Claimed Element
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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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