PTAB Erred by Relying on Inherency in Making Obviousness Determination Without Finding that the Limitation at Issue was Necessarily Present

SOUTHWIRE V. CERRO WIRE: Sep. 8, 2017. Before Lourie, Moore, and Hughes.   Takeaways: The Federal Circuit held that the Patent Trial and Appeal Board erred in relying on inherency in making a determination of obviousness, because PTAB did not find that the Summers reference necessarily would achieve a 30% reduction …

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. …