Monthly Archives: February 2014

GlaxoSmithKline LLC v. Banner Pharmacaps, Inc. et al.

Docket No. 2013-1593, -1594, -1595, -1598 O’MALLEY, WALLACH, TARANTO February 24, 2014 Brief Summary: Term “solvate” found not to require any “performance property…and hence raises no issue of insufficient structural, creation-process, or other descriptions to support such a property” (e.g., … Continue reading

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Ring & Pinion Service Inc. v. ARB Corporation Ltd.

Docket No. 2013-1238 MOORE, CLEVENGER, REYNA February 19, 2014 Brief Summary: Foreseeability of an equivalent at the time of application does not prevent application of the doctrine of equivalents (which is determined at the time of infringement). Claim vititation is … Continue reading

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Takeda Pharmaceutical Company et al. v. Zydus Pharmaceuticals USA, Inc.

Docket No. 2013-1406 PROST, PLAGER, CHEN February 20, 2014 Brief Summary: Claim term “400 μm or less” construed to refer to exactly “400 μm” and not “400 μm (+10%)” as determined by the DC. Claims also found not be invalid … Continue reading

Posted in Claim Construction, Enablement, Generics / ANDA, Indefiniteness, Infringement, Written description | Leave a comment

Solvay S.A. v. Honeywell International Inc.

Docket No. 2012-1660 RADER, NEWMAN, DYK February 12, 2014 Brief Summary: Honeywell determined to have reduced to practice invention, conceived of in Russia, on behalf of Russian inventors, thereby creating § 102(g)(2) prior art. Dissent argued the opinion “creates a … Continue reading

Posted in Anticipation (35 USC 102), Inventorship | Leave a comment

Tempo Lighting, Inc. v. Tivoli, LLC

Docket No. 2013-1140 RADER, MOORE, WALLACH February 10, 2014 Brief Summary: Claim term “inert to light” improperly defined by examiner using dictionary definition that was inconsistent with intrinsic evidence from prosecution history. Board affirmation of obviousness rejections vacated because it … Continue reading

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Nazomi Communications, Inc. et al. v. Nokia Corporation et al. (“Western Digital”)

Docket No. 2013-1165 LOURIE, DYK, WALLACH January 10, 2014 Brief Summary: No infringement because functional language required both hardware and software, and “[t]he purchase and installation of the…software clearly constitutes a ‘modification’ of the accused products”. Summary: Nazomi appealed DC … Continue reading

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The Ohio Willow Wood Company v. Alps South, LLC

Docket No. 2012-1642, 2013-1024 DYK, BRYSON, REYNA November 15, 2013 Brief Summary: Collateral estoppel decision affirmed because no new issues raised; obviousness found where claimed numerical limits nothing other than “the exercise of routine skill”; improper SJ of no IE … Continue reading

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In re Raymond Giannelli

Docket No. 2013-1167 RADER, LOURIE, MOORE January 13, 2014 Brief Summary: PTAB erred in affirming obviousness of claims to exercise machine “adapated to” be used in a pulling motion in view of prior art chest machine “capable of” being pulled … Continue reading

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EnOcean GmbH v. Face International Corp.

Docket No. 2012-1645 Panel TBD January 31, 2014 Brief Summary: Board decision that claim term “receiver” did not invoke § 112, ¶ 6 because “those skilled in the art would understand the structural significance of that claim language.” Sufficient structure … Continue reading

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