Claims With Ranges, the Result-Effective Variable, and In re Applied Materials

Tom Brody

Claims can be drafted to require a parameter associated with a value (number), range, or algorithm. Where a claim includes a parameter associated with a value, range, or algorithm, enhanced resistance to obviousness rejections can result because of case law requiring that the prior art disclose overlap and case law requiring the prior art disclose a goal-to-be-achieved in optimizing the value of the parameter. Case law requiring overlap is In re Peterson and In re Geisler, while case law requiring that the prior art disclose a goal-to-be-achieved in optimizing the parameter is In re Antonie and In re Boesch. In re Applied Materials describes both requirements. Rebuttal strategies include arguing that the prior art fails to disclose the same parameter as that required by the claim. Another strategy is to argue that the prior art fails to disclose one or both of overlap and the goal. Yet another type of rebuttal is to demonstrate that the prior art’s disclosed goal is associated with a parameter, but that it is not the same type of parameter as that is recited in the claim. Application of the above cases by the Board and examiners is unpredictable, because the Board and examiners sometimes base the rejection solely on In re Aller or only In re Gal (”design choice”). In re Aller and In re Gal case law are of low-stringency, and these bodies of case law work to the disadvantage of the inventor. 


''Adapted to'' After Aspex

Sean Burke

A recent trio of Federal Circuit cases has exposed uncertainty about the meaning of the linking phrase “adapted to.” Under the new intrinsic evidence standard, “adapted to” is initially presumed to mean “configured to,” but may be broadened to mean “capable of” if there exists support in the claims and specification.

The intrinsic evidence test has caused three problems for patent practitioners. First, the presumption of the narrower “configured to” meaning violates the broadest reasonable interpretation standard at the Patent & Trademark Office. Second, the use of intrinsic evidence unavoidably imports limitations from the specification into the claims. Finally, litigators have exploited, and likely will continue to exploit, the two definitions of “adapted to” by advocating either the broad definition or the narrow definition, depending upon whether the party owns the patent in question.


Trading on the Outcomes of Patent Challenges Short-Selling Petitioners and Possible Modifications to the Inter Partes Review Process

Feng Ye

Imagine investing in a pharmaceutical company A that sells drug B. Before investing, you researched company A and saw its high profit margin and its monopoly over drug B were protected by a patent. Naturally, you were excited about your research results, so you purchase company A’s stock. After purchasing, someone tells you that the patent covering drug B is invalid and he shorted – basically, bet against – the stock of company A. You are confident about your research on company A, so you ignore him. Later, while attending an investment conference, you overhear a hedge fund manager brag about successfully short-selling stock. You eavesdrop closer, as the manager whispers about driving a company’s stock price down by challenging its patents. Later, you find out that the hedge fund manager publically expressed interest in aggressively challenging low quality patents through inter partes review. While researching inter partes review, you find that Company A’s patent covering drug B was just targeted in a petition for inter partes review.


Written By: Roland Casillas
      Web and Blog Editor

Patent No. 6,360,968 B1

Wildfire Protection System

Inventors: Timothy Orrange and Gary J. Sweeton

Description: I was supposed to go camping this upcoming weekend in the Santa Barbara California area, but earlier this week there was a wildfire in the area that canceled the plans for myself and others planning on doing the same. So, in light of the weather being hot and dry in many places across the country, keep this invention in mind.


An Overview and Comparison of U.S. and Japanese Patent Litigation

Kyle Pietari

In recent decades, patent systems have taken a lead role in shaping the global economy. This trend has been particularly clear in the U.S. and Japan, two of the world’s largest economies that are home to two of the most utilized patent systems. Many people are familiar with how patents are enforced in one of these nations, but not the other. With globalization, patent litigation is becoming an increasingly international practice, and understanding the fundamentals of patent litigation in multiple key jurisdictions can be of crucial importance for a party to a patent dispute. 


Written By: Roland Casillas
      Web and Blog Editor

Patent No. 6,481,784 B2

Pickup Truck Tent Camping System

Inventors: Lee B. Cargill

Assignee: Enel Company


When All You Have is a Hammer, Everything Looks Like a Nail
In re Tam and the Federal Circuit's Conflation of Federal Trademark Registration and the First Amendment

Drew Jurgensen

In December 2015, the United States Court of Appeals for the Federal Circuit (Federal Circuit) issued an en banc decision in the In Re Tam case. The decision of the Federal Circuit reversed settled case law that has stood for the past seventy years. The court held that the “disparaging provision” of the Lanham Act is unconstitutional on its face because it fails the strictest form of judicial scrutiny in violating the First Amendment rights of a trademark owner without offering a narrowly tailored regulation that directly advances a compelling government interest. The disparaging provision, which allows the United States Patent and Trademark Office (USPTO) to deny federal trademark registration to marks that “disparage . . . or bring [a substantial composite of a referenced group] into contempt, or disrepute,” has now been effectively removed from the USPTO’s toolkit by way of the federal circuit court that has direct appellate review power over the Office.

Written By: Roland Casillas
     Web and Blog Editor

Patent No. 3,375,836A

Folding and Automobile-Transportable Camping Tent

Inventors: Lara Domeneghetti

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