Imagine That IP Law Blog

When drafting method claims, a strategic patent practitioner must keep in mind whether any portion of the claim language will be interpreted by a Patent Examiner, PTAB tribunal, or Federal Circuit as conditional. Initial considerations may include whether conditional claim language will even serve the objective of protecting an invention and what types of claim terms may explicitly or implicitly invoke a conditional limitation. If claims include a conditional limitation, how might that affect an Examiner’s prior art search, and what would be required for infringement? A ... Read More ›

In patent claim drafting, two distinct ways to claim combinations of elements are Markush and Superguide constructions. Both approaches have been explored in recent case law, particularly with respect to the significance of proper syntax when reciting the limitation of “at least one” when it precedes a series of elements. A closer look at both the Markush and Superguide approaches for reciting elements in combination offers guidance to avoid traps for the unwary.

Superguide
Of the two, the Superguide construction is likely simpler. In exploring Superguide v. DirecTV as a ... Read More ›

The recent September 2023 Federal Circuit decision in Elekta Ltd. v. Zap Surgical Systems, Inc., Case No. 21-1985 (Fed. Cir. 2023) shows that patent applicants should give consideration to formally addressing – on the record during prosecution - the relevance of the prior art references disclosed in their information disclosure statements (“IDSs”) to avoid later misinterpretation by tribunals in potential future Inter Partes Review (IPR) proceedings and court decisions.  Such misinterpretation may lead a tribunal to combine IDS references from irrelevant fields and ... Read More ›

The Federal Circuit’s 2004 decision in Superguide v. DirecTV can be influential in determining the fate of a patent’s validity based upon a simple test: does your claim recite “OR” or does your claim recite “AND” when listing a series of elements?  SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004).  What seems to be a triviality becomes critical under SuperGuide.  At issue is how to interpret the plain meaning of the phrase “at least one of” when it precedes a series of elements, such as in the hypothetical claim language, “at least one of A, B, and ... Read More ›

The advantages of 3D printing in the automotive industry are clear — reduce the overhead spend on standard manufacturing tools and procedures while also increasing speed of production. Computer-aided design (CAD) software, generally provided in the form of an electronic file for use on a computer, is fundamental to the 3D printing manufacturing process in that the end product is based upon the CAD file. While a company’s actual 3D-printed products can be protected by both design and utility patents, securing the intellectual property of the manufacturing process, including ... Read More ›

Pressure for development of more efficient battery chemistry in electric vehicle fleets is now greater than ever, prompting greater collaboration between major original equipment manufacturers (“OEMs”), such as Ford, Chrysler and GM, and battery component suppliers. Collaboration within the auto industry may often provide a measure of security against competitors.

But to all OEMS and well-funded startups, take fair warning! When such collaboration takes the form of licensing arrangements to jointly invent a new concept to a commercially satisfactory stage of ... Read More ›

In its recent opinion in Free Stream Media Corp. v. Alphonso Inc. on May 11, 2021, the U.S. Court of Appeals for the Federal Circuit confirmed that abstract idea claims directed to “targeted advertising” are patent ineligible subject matter under 35 U.S.C. § 101. Since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l in 2014, which provides the current authority for determining whether a proposed invention is patent eligible under § 101, the Supreme Court has not provided additional guidance in the area of subject-matter eligibility, and courts have been unable ... Read More ›

In the current business environment, companies are justifiably concerned about the uncertain future and controlling the cost associated with managing their IP portfolios and engaging outside counsel. In-house counsel also knows that IP is part of the long game and sacrificing company IP now to save costs may cast a long cloud over the future. So, how can the company’s IP interests be effectively managed under current conditions and the required service be provided by outside counsel?

In more conventional time, automatically turning to outside counsel based on past engagements ... Read More ›

Tesla CEO Elon Musk once explained that “in certain sectors like automotive, solar, and space, you don’t see new entrants.”¹ The auto industry, in particular, rebuffs new startups with a host of ominous caveats: the inability to appraise the future of the industry, the protracted history of broken manufacturers – thousands of them, in fact – and the calculated entry of the major tech companies, like Apple and Google, that seek to challenge the incumbents for market share. Building and delivering cars to the end user has always been a battle of attrition. So the emerging ... Read More ›