POLY-AMERICA, L.P. v. API INDUSTRIES, INC. (Fed. Cir. 2016) (P) – Disparaging a particular feature in the prior art generally constitutes a disclaimer of that feature

by | Oct 14, 2016 | [sub] specification, Estoppel / Disclaimer

Disparaging a particular feature in the prior art generally constitutes a disclaimer of that feature in the claimed invention. Here, for example, a trash bag with so-called “short seals” in its upper corners was found to be limited to a design in which the short seals...

FAIRWARNING IP, LLC v. IATRIC SYSTEMS, INC. (Fed. Cir. 2016) (P) – The automation of rule-processing is an abstract idea if the improvement is the automation not the rule

by | Oct 11, 2016 | [sub] Alice step one, Subject Matter Eligibility

The automation of rule-processing is a merely directed to an abstract idea if it is the automation rather than the rule that improves a technological process. Here, for example, claims reciting the automation of fraud and misuse detection were found to be directed to...

APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. (Fed. Cir. 2016) (P, en banc) – It is not obvious to reach across fields and select an undesirable feature from a prior art reference

by | Oct 7, 2016 | [sub] motivation, Obviousness

It is generally not obvious to reach across fields and select an admittedly undesirable feature with which to modify another prior art reference. Here, for example, no motivation to combine was found for modifying a primary reference directed to a mobile phone with a...

INTELLECTUAL VENTURES I LLC v. SYMANTEC CORP. (Fed. Cir. 2016) (P) – Novelty and non-obviousness do not alone resolve the question of inventive concept of Alice step two

by | Sep 30, 2016 | [sub] Alice step two, Subject Matter Eligibility

Novelty and non-obviousness do not alone resolve the question of inventive concept at the second step of Mayo/Alice. Here, for example, although the prior art did not disclose the idea of “determining” and “outputting” a particular type of e-mail, these operations...

INTERTAINER, INC. v. HULU, LLC (Fed. Cir. 2016) (NP) – A functionally-described element “adapted to” perform multiple functions does not exclude multiple elements

by | Sep 26, 2016 | [sub] claim context, Claim Interpretation

A functionally-described element “adapted to” perform a plurality of functions does not exclude multiple elements performing those functions when no structural limitations are recited. Here, for example, a “link program” adapted to “both … interrupt streaming of the...