Timeliness and relevance are not sufficient conditions for automatically granting a motion to submit supplemental information after IPR institution
| January 29, 2016
Redline Detection, LLC. v. Star Envirotech, Inc.
December 31, 2015
Before Wallach, Lourie, and Hughes. Opinion by Wallach.
Summary
The Federal Circuit held that, with regard to the motion to submit supplemental information after the IPR is instituted, the two criteria in section 37 CFR 42.123(a), timeliness and relevance, are not sufficient conditions for automatically granting a motion to submit supplemental information.
Tags: IPR > Motion to Submit supplemental information > obviousness > smoke generating device
In a post-Williamson decision, “compliance mechanism” is a means-plus-function element that does not comply with the requirements under §112.
| January 20, 2016
Media Rights Technologies, Inc. v. Capital One Financial Corp.
September 4, 2015
Before O’Malley, Plager, and Taranto. Opinion by O’Malley.
Summary
In Williamson v. Citrix Online, LLC, the Federal Circuit relaxed the presumption against interpreting a claim element as a means-plus-function element in the absence of the word “means”. In this first decision applying the Williamson standard, the Federal Circuit interpreted the claim term “compliance mechanism” as a means-plus-function element within the scope of §112, 6th paragraph.
Computer Implemented Means-Plus-Function Terms Must be Supported by an Algorithm in the Specification
| January 14, 2016
Eon Corp. IP Holdings LLC v. AT&T Mobility LLC
May 6, 2015
Before Prost, Newman and Bryson. Opinion by Prost.
Summary
The Federal Circuit held that the Katz exception did not apply. According to the Federal Circuit, a microprocessor or general purpose computer, under the Katz exception, lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm. Because Katz exception did not apply, the Federal Circuit found the claims indefinite because the disclosure of a microprocessor alone in the specification did not provide sufficient structure to the means-plus-functions terms at issue
When inventors are wrong, a certificate of correction can set things right—if the specification is robust
| January 7, 2016
Cubist Pharmaceuticals, Inc. v. Hospira, Inc.
November 12, 2015
Precedential Opinion by Bryson, joined by Wallace and Hughes
Summary:
In prosecution of a claim reciting an antibiotic, a certificate of correction to correct an error in a structural diagram of the antibiotic was not invalid. This was because the specification adequately described the intended subject matter, and it was clear to those skilled in the art that the inventors were in possession of the corrected structure. As such, the certificate of correction did not alter the scope of the claims.
