03/05/2015
A Triumph of Genius,By: Ronald K. Fierstein

Review by Roland Casillas

With the amount of interesting facts that were packed into this book, it is hard to create a chronological summary of what developed throughout Edwin Land’s life and occupation. But, each chapter sheds new light into one of the largest legal battles of the century. The story develops a picture perfect company, Kodak, assisting a newly formed company, Polaroid, to create an innovative product that will change the face of photography.

03/04/2015
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitlePacing Tech., LLC v. Garmin Int'l, Inc., No. 2014-1396 (Fed. Cir. Feb. 18, 2015).
IssueOn appeal, the parties dispute whether the asserted claims require the claimed devices to play back the pace information using a tempo, such as the beat of a song or flashes of light. This dispute turns on whether the preamble to claim 25 is limiting and on the construction of a “repetitive motion pacing system” as recited in the preamble.
Pacing Tech., LLC, at *4.
HoldingWe hold that the preamble to claim 25, which reads “[a] repetitive motion pacing system for pacing a user...,” is limiting [because the preamble terms “user” and “repetitive motion pacing system” limit the claims, and the embodiments discussed in the specification disavow an interpretation beyond that which is disclosed].
Id. at *5 (text added).
 
 
 
02/28/2015
Category: Civil Procedure 
 
 
 
By: Christian Hannon, Contributor 
 
TitleMemorylink v. Motorola Solutions, No. 2014-1186 (Fed. Cir. Dec. 5, 2014 ).
IssueMemorylink Corp. (“Memorylink”) appeals from the decisions of the United States District Court for the Northern District of Illinois (i) granting summary judgment in favor of Motorola Solutions, Inc. and Motorola Mobility, Inc. (collectively, “Motorola”) on the contract [] claims, [...] and (ii) dismissing various tort claims as barred by the statute of limitations [...].
Memorylink at *2.
HoldingBecause we conclude that the district court did not err in granting summary judgment or in dismissing the tort claims, we affirm.
Id.
 
02/24/2015
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleAntares Pharma. v. Medac Pharma. Inc., No. 2014-1648 (Fed. Cir. Nov. 17, 2014).
Issue[Are] the asserted reissue claims of [RE44,846 ("the '846 patent)] invalid for [...] failing the original patent requirement of [35 U.S.C. § 251, requiring] that the original specification expressly disclose the particular invention claimed on reissue[?]
Antares Pharma, at *4 (text added).
HoldingU.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942) made clear that, for § 251, “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” [...] Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.
Id. at *15 (text added, internal citation removed).
 
 
 
02/20/2015
Category: Civil Procedure  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleNeurorepair, Inc. v. The Nath Law Group, No. 2013-1073 (Fed Cir. Jan. 15, 2015).
IssueThe question before this court is whether a California state court malpractice case involving patent law representation was properly removed to a federal court.
Neurorepair, Inc., at *2.
HoldingBased on Gunn v. Minton, this court vacates and remands the district court’s judgments with instructions to remand the case to California state court [because: A. NeuroRepair’s suit would not “necessarily raise” issues of patent law; B. At least one patent law issue is actually disputed; C. The patent issue in NeuroRepair’s suit is not “substantial”; and D. if cases such as NeuroRepair’s were heard in federal court, it would disrupt the federal-state balance].
Id. at *2 (text added).
 
 
02/16/2015
Category: 102  
 
 
 
By: Abby Lin, Contributor 
 
CaseTyco Healthcare Group, LP v. Ethicon Endo-Surgery, Inc., No. 2013-1324, -1381 (Fed. Cir. Dec. 4, 2014).
Issues
1) "Tyco argues on cross-appeal that because Ethicon made changes to design features of the prototype, such as replacing the single cam with a dual cam mechanism, Ethicon did not establish prior conception. Tyco further asserts that Ethicon failed to show diligence through the date of constructive reduction to practice in October 1997, arguing that there was a gap in weekly records from September 1996 to February 1997."
Tyco, at *9.
2) "Relying on Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437 (Fed. Cir. 1984), Tyco asserts that the Ethicon Prototype cannot serve as prior art under § 102(g) because there was no reduction to practice before Tyco’s priority date. Tyco contends that the absence of prior reduction to practice is dispositive of the issue, but also argues that based on In re Clemens, 622 F.2d 1029, 1039- 40 (CCPA 1980), § 102(g) prior art cannot be prior art under § 103 if it was “unknown to both the applicant and the art at the time the applicant makes his invention,” because doing so would “establish a standard for patentability in which an applicant’s contribution would be measured against secret prior art.”"
Id. at *11.
Holdings
1) "Having established prior conception and diligent reduction to practice, the district court correctly found that the Ethicon Prototype anticipates those twenty-six claims under § 102(g)."
Tyco, at *10-11.
2) "The district court erred when it inconsistently applied § 102(g) to the Ethicon Prototype by not requiring prior reduction to practice for anticipation purposes but requiring it for the obviousness analysis. The clear language of § 102(g) does not require prior reduction to practice so long as the inventor can prove that he or she conceived of the invention first and was diligent in later reducing it to practice.....We therefore hold that neither § 102(g) nor § 103 make prior reduction to practice the only avenue through which § 102(g) prior art can constitute prior art under § 103. "
Id. at *11.
 
 
 
 
02/12/2015
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleIn re Imes, No. 2014-1206 (Fed. Cir. Jan. 29, 2015).
Issues
[I: “wirelessly”] The central dispute is whether Schuetzle discloses a second wireless communication module. […] The examiner thus construed “wireless” as including communication along the metal contacts of the removable memory card and the computer system when the memory card is inserted into the computer. According to the examiner, the metal contacts are not a wire.
In re Imes, at *2-3.
[II: “streaming”] The examiner found that Knowles discloses the recited communications module operable to wirelessly communicate streaming video to a destination.
Id. at *5.
Holdings
[I: “wirelessly”] We hold that the Board erred in concluding that Schuetzle’s removable memory card 35 discloses the claimed second wireless communication module. […] The metal contacts of a removable memory card do not carry a signal through atmospheric space using electromagnetic or acoustic waves, and thus removable memory card 35 is not a wireless communication module under the broadest reasonable interpretation of that term in view of the specification.
Id. at *4.
[II: “streaming”] Sending a series of e-mails with attached still images is not the same as streaming video. Such a construction is unreasonable as it comports with neither the plain meaning of the term nor the specification. Streaming video is the continuous transmission of video.
Id. at *6.
 
 
 
02/03/2015
Category: Civil Procedure 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleFleming v. Escort Inc., 2014-1331, -1371 (Fed. Cir. Dec. 24, 2014).
Issues
1. Fleming’s first contention on appeal [...] is that Escort’s evidence in support of invalidity was insufficiently specific to support the verdict.
Fleming, at *6.
2. Fleming also challenges the proof of Orr’s prior invention by invoking the principle that “oral testimony by an alleged inventor asserting priority over a patentee’s rights ... must be supported by some type of corroborating evidence.”
Id. at *8.
3. Fleming’s final challenge is that, even if Orr had priority of invention by virtue of his activities through 1996, he lost priority under 35 U.S.C. § 102(g)(2)’s disqualification of prior inventions that have been “abandoned, suppressed, or concealed.”
Id. at *10.
Holdings
1. We conclude that there was sufficiently specific factual support for the invalidity determinations [and because broad claims do not require extensive testimony and expert’s testimony on radar communication was adequate in view of the scope of the claims].
Id. at *6 (text added).
2. Fleming is correct that none of the corroborating evidence constitutes definitive proof of Orr’s account or discloses each claim limitation as written. But the corroboration requirement has never been so demanding. [...] It is a flexible, rule-of- reason demand for independent evidence that, as a whole, makes credible the testimony of the purported prior inventor with regard to conception and reduction to practice of the invention as claimed. [...]
Id. at *10 (internal citations omitted).
3. In this case, there is no evidence of any active efforts to suppress or conceal (because during the entire period between conception and filing, the inventor was either actively improving the invention, or engaged in another project after bankruptcy of his firm.).
Id. at *11 (text added).


© 2000-2014, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy