PTAB Cannot Treat Pre-AIA Means-Plus-Function Limitations As Purely Functional Under the Broadest Reasonable Interpretation Standard

IPCOM GMBH & CO. v. HTC CORPORATION: July 7, 2017. Before Prost, Clevenger, Chen. Takeaway: Pre-AIA §112 ¶ 6 (means-plus-function) claim construction analysis requires that the Board not only identify the particular claimed function, but also identify the corresponding structure, material, or acts that perform that function in the specification. …

Unsupported Declaration by an Interested Party is Insufficient to Remove § 102(e) Prior Art Reference

EMERACHEM HOLDINGS, LLC, v. VOLKSWAGEN GROUP OF AMERICA, INC.: No. 2016-1984; June 15, 2017.  Before Moore, Clevenger, and Chen. Takeaway: An uncorroborated declaration by an interested inventor may not be sufficient to show that a reference is not “by another” for the purposes of removing the reference as prior art …

In Finding Nonanticipation, the Court Cannot Distinguish the Prior Art Based on Features That Are Not Claim Imitations

MELCHIOR v. HILITE INTERNATIONAL: Dec. 12, 2016. Before Dyk (majority), Newman (concur), and Clevenger. (nonprecedential)                                                            Takeaway: Prior art cannot be distinguished on …

Federal Circuit Reverses PTAB Obviousness Finding

Authored by Paul T. Qualey and Andrew D. Kasnevich Digest of CUTSFORTH, INC. V. MOTIVEPOWER, INC., No. 2015-1316 (Fed. Cir. Jan. 22, 2016). On appeal from PTAB in No. IPR2013-00274. Before Prost, Clevenger, and Moore. Procedural Posture: Patentee appealed the PTAB’s final written decision that claims are unpatentable as obvious under …

Federal Circuit Affirms Decision That A Motor with a Horizontal Engine is Obvious Where The Prior Discloses Motors with Vertical Engines

Authored by Jeffrey S. Ginsberg and Andrew Wahba Digest of GATOR TAIL, LLC V. MUD BUDDY LLC, Nos. 2014-1747, 2014-1748 (Fed. Cir. June 22, 2015) (non-precedential). On appeal from M.D. La. Before Moore, Clevenger, and Wallach. Procedural Posture: Plaintiff patentee appealed district court decision finding claims of the asserted patents …