IN RE NUVASIVE, INC. (Fed. Cir. 2016) (P) – Merely adopting one party’s position is generally insufficient to support the PTAB’s finding of obviousness

by Steve Driskill | Dec 7, 2016 | [sub] motivation, Obviousness

Merely adopting the position of one of the parties to an appeal or review is generally insufficient to support a finding of obviousness by the PTAB. Here, for example, the PTAB’s reliance on only a conclusory statement by an expert that the modification of the prior...

APPLE, INC. v. AMERANTH (Fed. Cir. 2016) (P) – Automation of a desired result without a method for achieving that result lacks an inventive concept

by Steve Driskill | Nov 29, 2016 | [sub] Alice step two, Subject Matter Eligibility

Computer-based automation of a desired result without reciting a particular method for achieving that result does not rise to the level of an inventive concept under step two of the Mayo/Alice framework for establishing subject matter eligibility. Here, for example,...

ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION (Fed. Cir. 2016) (P) – Broad class of algorithms does not provide structure for computer-implemented means-plus-function elements

by Steve Driskill | Nov 17, 2016 | [sub] corresponding structure, Means Plus Function

A broad class of algorithms for performing the function of a computer-implemented means-plus-function element, as opposed to a single or small set of algorithms, is not sufficiently definite to provide the requisite algorithmic structure. Here, for example, the...

UNWIRED PLANET, LLC v. GOOGLE INC. (Fed. Cir. 2016) (P) – A prior art reference need not be directed to the claimed point of novelty in order to be analogous

by Steve Driskill | Nov 15, 2016 | [sub] analogous art, Prior Art

A prior art reference need not be directed to the claimed point of novelty in order to be analogous. Here, for example, prior art directed to the ordering of menu items was found to be analogous to the claimed prioritization of location-based search results because...

PERFECT SURGICAL TECHNIQUES v. OLYMPUS AMERICA, INC. (Fed. Cir. 2016) (P) – Reasonable diligence for antedating a reference requires only that the diligence be reasonably continuous

by Steve Driskill | Nov 15, 2016 | [sub] diligence, Inventorship

Reasonable diligence for antedating a prior art reference requires only that the diligence be reasonably continuous, not that attention be continuous throughout the critical period in order to be reasonable. Here, for example, a few periods of unexplained inactivity...