November 7, 2013

Federal Circuit Decisions for Week Ending November 1, 2013

Synthes USA, LLC v. Spinal Kinetics, Inc., No. 2013-1047, 2013-1059 (October 29, 2013) (precedential) (2-1) U.S. Patent No. 7,429,270

Key point:

  • In determining sufficiency of a written description to support claims broader than disclosed embodiments, if undisclosed species may perform in a dissimilar or unpredictable way, additional species are necessary to show possession of the genus.

Randall Mfg. v. Rea, No. 2012-1611 (October 29, 2013) (precedential) (3-0) U.S. Patent No. 7,214,017

Key point:

  • Under KSR, complete disregard of evidence of the state of the prior art in favor of specific teachings of cited § 103 references may be plainly prejudicial.

AstraZeneca LP v. Breath Ltd., No. 2013-1312, 2013-1352 (October 30, 2013) (nonprecedential) (3-0) U.S. Patent Nos. 7,524,834; 6,598,603

Key points:

  • Merely disclosing a preference for particular embodiments, or even disparaging particular embodiments, will not result in a finding of disavowal of claim scope.
  • Even if a reference is technically inaccurate, the reference may still be useful to establish the prior art if the person of ordinary skill would expect the disclosed results or effects.

In re Haase, No. 2012-1690 (October 30, 2013) (nonprecedential) (3-0) U.S. Patent Application No. 10/413,849

Key points:

  • For claiming result-effective variables when prior art is extensive, including an explicit measure of improvement may be necessary to overcome § 103 rejections.
  • Showing that prior art teaches away from the claims is not supported by merely showing that an alternative performs better than the claimed arrangement, or by mere disclosure of a non-overlapping range that is “slightly” less than the claimed range.

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