Federal Circuit Reverses Finding of Indefiniteness for Claiming Both an Apparatus and a Method

MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.: Oct. 30, 2017. Before Newman, O’Malley, Stoll.   Takeaway: System claims containing functional language are not indefinite for covering both an apparatus and a method if the claims merely use permissible functional language to describe the capabilities of the claimed system. Procedural Posture: Alleged Infringer …

Evidence of Secondary Considerations Could Not Overcome the Weight of the Competing Evidence of Obviousness

MERCK SHARP & DOHME CORP. V. HOSPIRA, INC: October 26, 2017. Before Newman (dissent), Lourie (majority), and Hughes   Takeaways: • A process is obvious if it differs from a previously patented process only in routine details that, even though not disclosed in the prior art, could be achieved by …

PTAB’s Adoption of Petitioner’s Arguments Regarding Modification of a Prior Art Reference Held Minimally Sufficient to Support its Obviousness Determination

IGNITE USA, LLC v. CAMELBAK PRODS., LLC: October 12, 2017 (non-precedential). Before Prost, Wallach, and Taranto.   Takeaway: PTAB’s adoption of Petitioner’s obviousness arguments in its opinion was “sufficient, if minimally,” to explain the connection between its factual findings and legal conclusion of obviousness. Procedural Posture: CamelBak Products, LLC petitioned for …

R&H’s Processes for Preparing Emulsion Polymers with Improved Opacity Not Invalid over the Prior Art that Does Not Include a “Swelling Agent” Narrowly Construed by the PTAB

ORGANIK KIMYA AS v. ROHM AND HAAS COMPANY: October 11, 2017. Before Prost, Newman, and Taranto.   Takeaway: Where a patent specification uses the word ‘include’ immediately followed by the phrase ‘are those which,’ the element is properly limited to the embodiments “which exhibit the functional characteristics thereafter described.” Procedural …