Gregory S. Rabin
McDermott Will & Emery
Articles
High evidentiary threshold for diligence in reducing invention to practice
USA - November 26 2014 Addressing the evidentiary threshold to show diligence in constructive or actual reduction to practice between the date of a prior art reference and…
Broadening reissue cannot be used to remove claimed features relied upon in prosecution arguments
USA - September 28 2012 Addressing whether, in a broadening reissue application, a patentee can remove claimed features that were relied upon during prosecution of the parent patent to distinguish prior art, the U.S. Court of Appeals for the Federal Circuit found that a patentee cannot use a reissue to broaden a claim to include subject matter that was intentionally disclaimed during prosecution of the parent patent for purposes of having the parent patent granted.
Prior art reference does not “teach away” if it fails to criticize, disclaim or discourage the claimed technique
USA - December 30 2014 Addressing the obviousness issue whether an asserted secondary reference impermissibly changes the principle of operation of a primary reference, the…
Patent claim terms are literally interpreted
USA - June 27 2013 Addressing the issue of patent infringement, the U.S. Court of Appeals for the Federal Circuit held that, if a claim states that a point-of-sale…
In an IPR, issue preclusion does not attach until appeal rights are exhausted
USA - July 29 2015 Addressing issue preclusion in the context of an Inter Partes Review (IPR), the Patent Trial and Appeal Board (PTAB or Board) allowed the patent…
