February 5, 2014

Federal Circuit Decisions for Week Ending January 31, 2014

In Re Chaganti, No. 13-1372 (January 27, 2014) (nonprecedential), App. No. 09/634,725

Key points:

  • A reference that describes flaws in a technology which also purports to solve those flaws does not “teach away” from using the technology in determining obviousness.
  • “Common sense” may supply a motivation to combine references, but the USPTO must still clearly articulate a reason for combining references.

Realtime Data. v. Morgan Stanley, 2013-1092, (January 27, 2014) (nonprecedential) U.S. Patent Nos. 7,417,568; 7,714,747; 7,777,651

Key point:

  • Statements made during prosecution of a patent are potentially relevant in construing claims in related or “sibling” patents, even when the patent is not presently being asserted with the related or “sibling” patents.

EnOcean GmbH. v. Face International Corp., 2012-1645, (January 31, 2014) (precedential)(3-0), Pat. App. No. 10/304,121

Key points:

  • A claim term needs sufficiently definite structure to avoid invoking the means-plus-function language of § 112 even if the term connotes a class of possible structures rather than a single structure.
  • A priority application disclosing only a specific structure may support a later filed “means-plus-function” claim when the specific structure allows one skilled in the art to understand the bounds of the “means-plus-function” limitation.

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