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No Need to Neglect Nexus: Prosecution Lessons from FOX Factory v. SRAM

No Need to Neglect Nexus: Prosecution Lessons from FOX Factory v. SRAM

A. Obviousness analysis: secondary considerations, nexus, and the presumption of nexus On December 18, 2019, in FOX Factory, Inc. v. SRAM, LLC[1] (“Fox Factory”), the Court of Appeals for the Federal Circuit addressed the conditions under which a patent owner is entitled to the presumption of a nexus between a claimed invention and evidence of secondary considerations.  Secondary considerations or objective indicia of non-obviousness, if present, must be considered in determining whether a patent claim is obvious.[2]  Evidence of secondary considerations may help demonstrate that the claim is not obvious, even when the prior art would have suggested that the claim is obvious.[3]  Secondary considerations include long-felt but unsolved needs, failure of others, unexpected results, commercial success, copying, licensing, and praise.[4]  To be relevant, secondary considerations evidence must be commensurate in scope with the claimed invention.[5]  In that regard, there must be a “nexus,” or sufficient connection, between the claimed… Continue Reading

No Nonce-nse: MTD Products Inc. v. Iancu Untangles Means-Plus-Function Interpretation

    In MTD Products Inc. v. Iancu[1], the U.S. Court of Appeals for the Federal Circuit described how to identify a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6[2].  In particular, the court clarified that the question of whether § 112, ¶ 6 applies is distinct from the determination of what structure corresponds to the means-plus-function limitation[3], and held that the description in the specification of corresponding structure does not determine if § 112, ¶ 6 applies.[4] MTD is a decision on appeal from an inter partes review (“IPR”) of U.S. Patent No. 8,011,458 (“the ’458 patent”)[5], owned by MTD Products.[6]  The ’458 patent describes zero turn radius (“ZTR”) vehicles such as riding lawnmowers[7], and explains how for prior art ZTR steering systems, when a vehicle was moving forward, it turned in the direction the steering wheel was rotated, but when the vehicle was moving in reverse, it turned… Continue Reading

Subject Matter Eligibility Guidance from the Federal Circuit: Thales Visionix v. United States

Subject Matter Eligibility Guidance from the Federal Circuit: Thales Visionix v. United States

Both the courts and the Patent & Trademark Office (PTO) have struggled to define the metes and bounds of the subject matter eligibility analysis under 35 U.S.C. § 101.  The Court of Appeals for the Federal Circuit’s recent decision on March 8, 2017 in Thales Visionix Inc. v. United States1 further clarifies the first step of the eligibility analysis, while confirming the significance of that step. Under § 101, patent protection is available to “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”  Patent claims directed to laws of nature, natural phenomena, and abstract ideas, however, are not patent-eligible subject matter.2  Courts and the PTO evaluate the subject matter eligibility of claims under a two-step framework set forth by the Supreme Court in Mayo Collaborative Servs. v. Prometheus Labs., Inc.3 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l. … Continue Reading

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