March 29, 2016

Federal Circuit Court Decisions For Week Ending March 11, 2016

In Re: Queen’s University at Kingston, No. 2015-145, (March 07, 2016) (Precedential) (2-1)

Key point(s):

  • Communications with non-attorney patent agents and clients regarding application preparation and prosecution, even without an attorney present, are protected by the agent-client privilege.

ULF Bamberg v. Dalvey, No. 2015-1548, (March 09, 2016) (Precedential) (3-0)

Key point(s):

  • The written description requirement is not met merely by stating something is undesirable.

In Re Smith, No. 2015-1664, (March 10, 2016) (Precedential) (3-0); U.S. Patent Application No. 12/912,410

Key point(s):

  • Appending purely conventional steps to an abstract idea does not supply a sufficiently inventive concept.
  • Not all inventions in the gaming arts are foreclosed from patent protection under § 101, e.g. claims directed to conducting a game using a new or original deck of cards could potentially survive step two of Alice.

In Re Varma, No. 2015-1502, (March 10, 2016) (Precedential) (3-0); U.S. Patent No. 6,349,291; Investpic LLC v. International Business Machines Corporation , (March 10, 2016) (Precedential) (3-0); U.S. Patent No. 6,349,291

Key point(s):

  • The transitional term comprising does not render each limitation or phrase within the claim open-ended.
  • The indefinite article “a” cannot serve to negate what is required by the language following “a”.

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