08/19/19

The Current State of Innovation within the U.S. Legal System – Views on Evolving Protection for Intellectual Property Rights in the United States from the USPTO and the Courts

Andrei Iancu

Good afternoon everyone! Thank you, Pete Thurlow, for that generous introduction. It’s a great honor to open today’s panel discussion on the current state of innovation within the U.S. legal system, and I appreciate NYIPLA’s gracious invitation to be part of this outstanding annual event.

This very day 59 years ago, on March 22, 1960, the United States Patent Office issued patent number 2,929,922 to New York native Arthur Schawlow of Bell Labs and Charles Townes, a Columbia University professor and consultant to Bell Labs, for coinventing the optical maser—now called a laser. While doing postdoctoral research at Columbia University, Schawlow met Townes, and together they sought ways to extend the maser principle of amplifying electromagnetic waves into the shorter wavelengths of infrared and visible light.

In 1958, the two scientists published a proposal for the invention in an issue of Physical Review, prompting an international competition to build a working laser. Today, of course, lasers have countless applications and make it possible to play CDs, correct eyesight, scan labels in a grocery store, enable autonomous vehicles, measure time precisely, survey planets and galaxies, and even witness the birth of stars. 

08/12/19

PTOS Annual Meeting Keynote Address Will You Be My Valentine: Celebrating the USPTO Examiner Through History

Laura A. Peter

Today it is my honor to address so many patent and trademark examiners, and to celebrate you. You are the reason why our U.S. intellectual property system is so incredible. You are all highly educated experts in your fields. Every day, you work diligently to ensure that the patents and trademarks that this agency issues are strong and reliable. So today, I want to thank you and show you how much our agency has evolved over the last two centuries.

On this Valentine’s Day, let us start with taking a closer look at some of the jewelry, flowers, and candy associated with today through the lens of intellectual property.

When you get home tonight and your valentine gives you a special blue jewelry box, you will instantly know it’s from Tiffany & Co. Tiffany received a registered trademark for that particular blue color over 20 years ago. And the original Tiffany & Co. trademark dates back to 1893. Tiffany also holds 36 design patents and even a utility patent for a clip-on earring force tester.

The bouquet of red roses you sent to your sweetheart may even be patented. In 1931, the first plant patent issued for a climbing rose. In fact, 4% of all plant patents are for varieties of roses. 

08/05/19

Rossman Memorial Award 2019

Joshua Schwartz

The Rossman Committee was privileged to present the 2019 Joseph Rossman Memorial Award to Judge Hung Bui during the 2019 Annual Meeting of the Patent and Trademark Office Society.

The award was established in 1972 by the Society and the family of Dr. Joseph Rossman. Joseph Rossman started his career as a patent examiner and was Editor-in-Chief of The Journal back in the 1930s. He had degrees in chemical engineering and law, as well as a doctorate in psychology. In addition, Dr. Joseph Rossman was an author with a life-long interest in creativity, engineering and law. Dr. Joseph Rossman was the author of many articles in the Journal from the 1930s through the 1960s. Because the Journal was such a big part of Dr. Rossman’s life, his family approached the Society with the idea of establishing the Rossman Award in 1972. The Society enthusiastically embraced the idea and the rest is history. The Rossman Award is given to the author of the article in the Journal that, in the opinion of the judges, makes the greatest contribution to the fields of Patents, Trademarks or Copyrights. Factors that are taken into consideration include originality, timeliness of the subject, depth of research, accuracy, readability, and the potential for impact on the existing system. 

07/29/19

Federico Memorial Award 2019

Joshua Schwartz

The Federico Committee was privileged to present the 2019 Pasquale J. Federico Memorial Award to The Honorable (Ret.) Randall Rader during the 2019 Annual Meeting of the Patent and Trademark Office Society.

In 1993, the SOCIETY established the Pasquale J. Federico Memorial Award. The Federico Award is intended to recognize outstanding contributions to the Patent and Trademark Systems of the United States of America. It may be given to an individual, a group of individuals, a corporation or an institution. Awards to individuals may be made posthumously. No more than one award may be given in each year. Anyone may make a nomination.

Judge Randall Rader is a graduate of Brigham Young University and the George Washington University Law School. Judge Rader served as Counsel, to the House of Representatives, Interior and Ways and Means Committees from 1975-1980. Then served as Chief Counsel, to the Senate Judiciary Committee Subcommittees from 1980-1988. President Ronald Reagan appointed Rader to the United States Court of Federal Claims in 1988, to succeed Robert M. M. Seto. The United States Senate confirmed the nomination by unanimous consent on August 11, 1988. He served there for approximately two years. On June 12, 1990, Rader was nominated by President George H. W. Bush to a seat on the United States Court of Appeals for the Federal Circuit vacated by Judge Jean Galloway Bissell. Rader was confirmed by the Senate on August 3, 1990, and received his commission on August 9, 1990. In 2010, Rader became Chief Judge of the Federal Circuit succeeding Chief Judge Paul Redmond Michel upon his retirement. He served in that capacity through May of 2014. Since leaving the bench in 2014, Judge Rader has founded the Rader Group, initially focusing on arbitration, mediation, and legal consulting and legal education services. 

07/22/19

JPTOS Editor-in-Chief Personal Notes: Two-Prongs within Step 2A

Alexander Sofocleous

Pondering subject matter eligibility, while browsing the aisles of my favorite hardware store, the following fleeting thought entertained my wandering mind: Anticipation and obviousness rejections involve the difference between a claim and prior art. Does subject matter eligibility involve a difference between the claim and a claimed judicial exception? Should it be more challenging to differentiate a claim (as a whole) from elements in the claim than to differentiate the same claim from applied prior art?

While studying USPTO’s notice of examination guidance and request for comments, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), I found it helpful to diagram Step 2A side-by-side the former flow-chart, from 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74621 (Dec. 16, 2014). 

07/15/19

Predicting Institution Decisions in Inter Partes Review Proceedings

Yuh-Harn Yang, Pu-Jen Cheng, and Feng-Chi Chen

Inter partes review (IPR) was introduced in Year 2012 as an adversarial, post-grant patent review process. The principle of claim construction (broadest reasonable interpretation), standard of proving unpatentability (preponderance of evidence), and shortened time to final decision (18-24 months) have made IPR a popular venue for patent challengers. Institution of an IPR mounts substantial pressures on the patentee because the challenged claims are highly likely to be invalidated in the final decision. Therefore, a reliable model to predict institution decisions is critical for patent and business management. In this study, we construct three support vector machine (SVM) models separately based on the contexts of IPR proceedings and features of the disputed patents. The ensemble model that incorporated the three SVMs can predict institution decisions with 79% accuracy and 0.85 Area under the ROC Curve. Separately, the IPR context-based models perform better than the patent feature-based model. Interestingly, most of the features traditionally regarded important for patent values are not significantly associated with institution decisions. Furthermore, models trained on earlier IPR documents can accurately predict the institution decisions in later proceedings. The prediction accuracy increases with the accumulation of training data. In addition, our approach can identify IPR context features that may influence institution decisions. Our results can provide an empirical basis for IPR policy making and business strategic planning. 

07/08/19

The Good Faith, the Bad Faith and the Ugly

Katherine Hunziker

If a person1 has a federally registered trademark, that person enjoys all the rights and protections provided by the Lanham Act across the country, excluding areas in which another person was using the mark prior to federal application. A federal registration confers constructive notice of priority throughout the country beginning at the time of application. Thus, an owner of a registered trademark can enjoin any subsequent user from using that mark. An unregistered trademark owner, however, has common law rights to their mark, but only in the areas in which it is being used in commerce and known by the relevant public. As a result, the first to use the unregistered mark (the senior user) cannot claim priority over a subsequent remote use of the mark by another person (the junior user) who adopted the mark in good faith.

The issue addressed here arises when one or both of the users of the same or similar unregistered mark expand into one another’s territory. Of course, the senior user can not enjoin the junior user without first proving that he has a protectable mark and that the junior user’s use of the same or similar mark is likely to cause consumer confusion. Thus, once the junior and senior user expand, and their respective uses of the marks are likely to cause consumer confusion, the junior user can raise the affirmative defense provided by the Tea Rose-Rectanus doctrine. Once the junior user has established that she adopted the mark in good faith, the senior user may not oust the geographically remote junior user, regardless of the fact that the senior user was the first to adopt the mark. 

06/26/19

Preclusive Effect of the International Trade Commission’s Patent Decisions: Can District Courts Ignore Texas Instruments Inc. v. Cypress Semiconductor Corp.?

Emre Yuzak

Section 337 of the Tariff Act of 1930, as amended, gives complainants a powerful remedy against unfair practices in import trade. It permits the United States International Trade Commission (“ITC”) to exclude certain items from importation, directing Customs and Border Patrol to deny their entry. Section 337, with its liberal grants of exclusion orders, attracts mainly intellectual property disputes, including several high-profile smartphone cases.

Litigants in section 337 cases may also bring their disputes to state or federal court, raising the question of what preclusive effect the ITC’s decision has. In Texas Instruments Inc. v. Cypress Semiconductor Corp., the Federal Circuit ruled that parties cannot rely on the ITC’s decision in patent cases to apply claim preclusion or issue preclusion in other cases. 

06/18/19

Taking Patent Rights: Sovereign Immunity & the Fourteenth Amendment in Patent Validity & Inventorship Challenges

Connor J. Hansen

The Fourteenth Amendment provides that “No State shall . . . deprive any person of . . . property without due process of law” and has been interpreted to incorporate the Takings Clause of the Fifth Amendment: “nor shall private property be taken for public use, without just compensation.” Collectively, the Fourteenth Amendment and the Takings Clause, prohibit a state from depriving property owners of all economically beneficial use of their property without providing compensation for that deprivation.

A patent “confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more that it can appropriate or use without compensation land which has been patented to a private purchaser.” Patent rights “fall squarely within both classical and judicial definitions of protectable property” that may be taken. This is largely because the right to exclude others concomitant with patent rights is “one of the most essential sticks in the bundle of rights that are commonly characterized as property.” When a sovereign owns an invalid patent or a patent to which it is not entitled, it has the right to exclude all others, even those who are the rightful owner of the patent or those who developed the prior art that would render the patent invalid, from practicing the claimed innovation. Other parties are also precluded from obtaining patent rights for the subject matter encompassed in the sovereign patent. The state has effectively appropriated from those parties the entire bundle of exclusionary rights conferred by a patent. 

05/28/19

The Likelihood of Exclusion: Economic Disparity in the United States Trademark System

Michael J. Choi

Trademarks are integral in the marketplace, serving as identifiers of the source of a business’s goods or services. Consumers rely on trademarks not only as source identifiers, but also as “quality guarantor[s] and consumer status symbol[s].” Entrepreneurs use trademarks to develop a brand and pursue opportunities for economic mobility. Although trademarks originally sprouted to protect consumers from fraud and counterfeit, the actual effects of modern trademark law severely overshadow these traditional purposes. Patterns in legislation and interpretations reveal a system of favoring the haves over the havenots, depriving have-nots of both offensive and defensive protections otherwise provided by trademark law.

The value of a trademark in modern day is the mark itself, rather than the brand it represents. Companies take just as much pride in their logos and brands as their actual products and services. As a personal property right, a trademark creates the duty to diligently manage and oversee these rights. However, overzealous trademark policing creates a hostile climate for the freedom of expression, the entrepreneurial spirit, and ultimately, a competitive and free-flowing marketplace. As a result, small businesses and other marginalized groups, often lacking the resources of large companies, are effectively excluded from the trademark system. 

05/20/19

Warning! Patent Agent Privilege Ends Abruptly

Matthew M. Welch

Say I have lost all faith in patents, judges, and everything related to patents. –Thomas Edison

Thomas Edison and many of the innovators following in his footsteps have been disgruntled and discouraged by United States patent law. However, patentintensive industries promote innovation, increase the GDP, and create millions of jobs. Patent law is vital to the continued prominence of America as a world power, and, to continue that prominence, patent law must adapt to current times. As a start, it must begin providing solutions to a number of problems plaguing the patent realm. One of the most outstanding problems currently running course through patent law is the dynamic between the attorney-client privilege and patent agents. The problem is two-fold. First, some courts have extended the privilege to patent agents, but the way they are treating this privilege is insufficient. Second, other courts are not recognizing the privilege whatsoever.

Attorney-client privilege is a pillar of the legal system that is entrenched throughout the United States. This privilege was instituted to allow full and frank discussions between clients and their attorneys. The purpose behind this was to allow attorneys to fully represent their clients based on all available facts. However, attorneys are not the only players in the field of patent law. In fact, one fourth of all patent practitioners are non-attorneys. These individuals are patent agents. 

05/15/19

BRUCE A. LEHMAN 1993-1998

Bruce A. Lehman was born in Beloit, Wisconsin, on September 19, 1945. He received history and law degrees from the University of Wisconsin – Madison and served as legal counsel to the Wisconsin state legislature before entering military service during the Vietnam War. He was a first lieutenant in the U.S. Army.  

Afterward he worked at the Department of Justice in Washington, D.C. He joined the staff of the House Judiciary Committee when it was considering a recommendation to impeach President Richard Nixon. In 1978 he was appointed chief counsel of the Judiciary subcommittee with jurisdiction over intellectual property issues. He then spent 10 years in private law practice in Washington, where he was active in civic affairs.

President Bill Clinton appointed Lehman assistant secretary of commerce and commissioner of patents and trademarks, and he entered service on August 11, 1993. He was the first openly gay man to be confirmed by the U.S. Senate. 

05/13/19

PTAB Practice Tips on Oral Arguments

James A. Worth

PTAB oral arguments provide an opportunity for parties to highlight select points from their written briefs and to answer questions from the panel hearing the case. Failing to answer questions from the panel is one of the quickest ways to lose credibility with the panel. This article sets forth certain considerations and practice tips for counsel appearing for arguments before the PTAB.

In particular, this article suggests that counsel refrain from relying on evidence not already of record or new theories of a case, that counsel prepare for a wide range of questions based on the record, and with respect to AIA hearings, that counsel may wish to take a flexible approach towards the use of slide presentations and exhibits. This article will address each suggestion in turn, and review some of the animating considerations. 

05/07/19

Here’s a sneak peak into Volume 101 Issue 1

  • Federico and Rossman Awards 2019
Joshua Schwartz
  • PTAB Annual Meeting Keynote Address – Will You Be My Valentine: Celebrating the USPTO Examiner Through History
The Honorable Laura A. Peter
  • The Current State of Innovation within the U.S. Legal System – Views on Evolving Protection for Intellectual Property Rights in the United States
The Honorable Andrei Iancu
  • PTAB Practice Tips: Comparing a Motion to Strike and a Motion to Exclude
The Honorable James A. Worth
  • The New Highwayman: Enforcement of U.S. Patents on Cannabis Products
William J. McNichol, Jr.
  • Looking for a Needle in a Haystack: Limitations of Searching Foreign Trademark on TESS
Yan Song
  • Who Owns Fox? Possession is the Root of Title in Patent Law
Christine Johnson
  • The Rumble About the Jungle: The Fight Over Dot Brand gTLDs and Geographic Names
J. Spencer Sanders, II
  • Section 101: What’s Left to Patenting in the Life Sciences after Myriad, Mayo, and Alice?
Warren D. Woessner & Robin A. Chadwick

05/01/19

 

HARRY F. MANBECK JR. 1990-1992

Harry F. Manbeck Jr., was born in Honesdale, Pennsylvania on June 26, 1926. He received a bachelor’s degree in electrical engineering from Lehigh University and was hired as an engineer by General Electric Co. in 1949. A few years later he received a law degree from the University of Louisville and became a GE patent attorney.

He rose through the ranks at GE, a company with a large patent department, to become the chief patent counsel, a position he would hold for 20 years. During that period he was a prolific, well-known speaker on intellectual property rights.

President George H.W. Bush appointed Manbeck assistant secretary of commerce and commissioner of patents and trademarks, and he took the oath of office on March 12, 1990.


 

04/24/19

DONALD J. QUIGG 1985-1989

Donald J. Quigg was born April 28, 1916, in Kansas City, Missouri. He received a bachelor’s degree in business administration from the University of Oklahoma and a law degree from the University of Missouri. After a brief period with a law firm he entered the U.S. Army during World War II and received the Silver Star Medal for valor in combat.

In 1946 he joined Phillips Petroleum Co. in Bartlesville, Oklahoma, as a staff patent attorney and studied chemistry at night. In an era when employees often stayed with a company for an entire career, Quigg was a Phillips patent attorney for 35 years and was named an inventor in 10 Phillips patents.

He was chief patent counsel for his last 10 years at Phillips. Although Quigg worked at Phillips headquarters in Oklahoma, he was responsible for an office the company maintained in Washington, D.C., to train patent attorneys. The office monitored patent legislation and regulations for Phillips, giving Quigg familiarity with patent policy issues in Washington.

In 1981 he retired and took the post of deputy commissioner of patents and trademarks. After four years as deputy President Ronald Reagan appointed him assistant secretary of commerce and commissioner of patents and trademarks. He took office on October 13, 1985, at age 69. 

04/17/19

GERALD J. MOSSINGHOFF 1981-1985

Gerald J. Mossinghoff was born in St. Louis on September 30, 1935. He received a bachelor’s degree in electrical engineering from St. Louis University and a law degree from George Washington University.

He worked four years as an examiner at the Patent Office, starting in 1957, before leaving to join a law firm. He returned to government service for a series of jobs including the post of director of legislative planning at the USPTO. Later, at the National Aeronautics and Space Administration, he rose to the position of deputy general counsel. 

President Ronald Reagan appointed Mossinghoff commissioner of patents and trademarks, and he took the oath of office on July 8, 1981. The next year Congress changed the title to Assistant Secretary of Commerce and Commissioner of Patents and Trademarks, and Mossinghoff reported directly to the secretary of commerce. 

04/02/19

SIDNEY A. DIAMOND 1979-1981

Sidney A. Diamond was born October 17, 1914, in New York City. He received a bachelor’s degree from Dartmouth College and a law degree from Harvard University.

He practiced law in New York City and Washington, D.C. From 1943-46 he worked for the Justice Department as special attorney and special assistant to the attorney general. From 1971-78 he lived in Tucson, Arizona.

In the spring of 1978 President Jimmy Carter appointed Diamond assistant commissioner of trademarks, a post that at the time required presidential appointment with Senate confirmation. Later that year President Carter elevated him to commissioner of patents and trademarks. Diamond took the oath of office on November 29, 1979. 

03/26/19

DONALD W. BANNER 1978-1979

Donald W. Banner was born in Chicago on February 24, 1924. He was a P-47 fighter pilot during World War II and was shot down in Europe and held as a prisoner of war until 1945. After the war he received an electrical engineering degree from Purdue University and law degrees from the University of Detroit and The John Marshall Law School. 

He was a patent attorney for Borg-Warner Corp. for 25 years, working on projects that included development of automatic transmissions for automobiles. He was chief patent counsel for his last 12 years with the company. Three of his five children also were intellectual property attorneys.

He was first nominated to be commissioner of patents and trademarks by President Richard Nixon but decided not to accept the appointment. In 1978 he was nominated again, by President Jimmy Carter, and took the oath of office on June 5, 1978. 

03/20/19

C. MARSHALL DANN 1974-1977

C. Marshall Dann was born in Wilkinsburg, Pennsylvania, on March 27, 1915. His father was an engineer with Westinghouse Electric Corp. He received a bachelor’s degree in chemistry from Worcester Polytechnic Institute, a master’s degree in chemistry from the University of Delaware, and a law degree from Georgetown University.

He spent 36 years with E.I. du Pont de Nemours & Co., at the time the world’s largest chemical company. He started as a research chemist in Wilmington, Delaware, and was named as the inventor in a U.S. patent. He decided to take advantage of a DuPont program in Washington, D.C., that allowed employees to work in the company’s Washington office as patent apprentices while attending law school. Many large companies ran apprentice programs during that era. After law school he returned to Wilmington and rose to the position of chief patent counsel of the company, managing more than 100 patent lawyers. 

03/18/19

The Effects of AI Technology on Personal Injury Litigation

 

By: Rae Steinbach

 

The history of artificial intelligence dates back to the 1950s, but it has been taking on a larger role in our personal and business lives in more recent years. Machine learning and other AI technologies have taken 450% more jobs since just 2013, and that trend is only going to continue.

 

While many people anticipated the gradual introduction of artificial intelligence into lower-skilled jobs, fewer expected the technology to apply to more complex settings such as the law. Personal injury lawyers and their area of practice have already been profoundly affected by the rise of AI, substantially increasing client access to legal resources.

 

Streamlining Claims with Artificial Intelligence

 

Compared to the current timeline involved in processing insurance claims, artificial intelligence promises a significant upgrade. Using AI software, claim processing time could be reduced to as little as five seconds. Efficiency is further aided by chatbots which can respond to simple customer inquiries.

 

The Limits of AI

 

While insurance companies obviously see significant potential in the integration of artificial intelligence, there may also be some cases in which the human element is needed. Personal injury lawyers will need to take on challenges made by plaintiffs who believe artificial intelligence made the incorrect decision.

 

It’s also difficult to determine whether an algorithm will be able to capture everything relevant to the outcome of a claim. Much of the responsibility will rest with lawyers, as they will need to learn which types of cases are likely to be missed by prevailing AI technology.

03/13/19

ROBERT GOTTSCHALK 1972-1973

Robert Gottschalk was born on January 10, 1911, in New York City. He received a bachelor’s degree in electrical engineering from McGill University and a law degree from St. Lawrence University. Gottschalk practiced with law firms and was a patent counsel with companies including Corn Products Inc. and GAF Corp. He spoke and wrote frequently about patent law.

In May 1970 Gottschalk moved to Washington, D.C., to become deputy commissioner of patents. The position he took had for many years been called First Assistant Commissioner in the statute, but in 1969 the Patent Office expanded the duties for the position and adopted the deputy title by executive action. The statute was later amended to use the deputy title as well.

After his predecessor resigned, Gottschalk served as acting commissioner for several months, after which President Richard Nixon appointed him commissioner of patents. He took the oath of office on January 7, 1972.

03/06/19

WILLIAM E. SCHUYLER JR. 1969-1971

William E. Schuyler Jr. was born on February 3, 1914, in Washington, D.C., and resided in the Washington area for his entire career. His mother operated a patent information business. He received a bachelor’s degree in electrical engineering from Catholic University and a law degree from Georgetown University. 

He was a law firm partner and litigator who represented clients in district court patent infringement trials throughout the United States. He argued many appeals in regional Courts of Appeals in the era before the Court of Appeals for the Federal Circuit was established. He taught a law school course in patent litigation for more than 20 years.

President Richard Nixon appointed Schuyler commissioner of patents, and he took the oath of office on May 7, 1969.

03/04/19

Unitary Patents & Unified Patent Court: The Start of a new Epoch in the European Patent System?

Markus Nolff

Since signing the Treaty of Rome in 1957, creating the European Economic Community, a community patent was thought to be necessary to further the goal of forming and furthering a single, common market. After various failed attempts within the last fifty years, the so-called “unitary patent” is on the brink of becoming reality. The unitary patent will be of a unitary character, granted and administered centrally at the European Patent Office, with unitary effect throughout almost the entire European Union. Start of availability of the unitary patent is linked to the establishment of a Unified Patent Court which will have exclusive judicial competence regarding any action, including infringement and revocation, concerning the unitary patent. The unitary patent in combination with the Unified Patent Court is expected to considerable ease the effort and cost for acquisition, maintenance, and enforcement of patent protection, thereby further incentivizing research and development. However, enactment has been held up by a pending constitutional complaint before the German Federal Constitutional Court and is now also complicated by the upcoming Brexit. It is currently unclear whether and when the relevant treaty might enter into force.

02/27/19

EDWARD J. BRENNER 1964-1969

Edward J. Brenner was born in Wisconsin Rapids, Wisconsin, on June 26, 1923. He received bachelor’s and master’s degrees in chemical engineering and a law degree from the University of Wisconsin. 

He served in the U.S. Army and was a member of the radiological safety team for the Bikini Atoll nuclear bomb tests. He was an engineer and patent attorney with Standard Oil of New Jersey’s Esso Research and Engineering Co., where he became assistant director of the legal division.

President Lyndon Johnson appointed Brenner commissioner of patents, and he took the oath of office on March 11, 1964.

02/25/19

Why Patent Ownership Disputes Can Make or Break Consumer Product Launches

By Bradley J. Van Pelt

In the race to produce the latest and greatest consumer products, companies working with outside consultants and manufacturers must establish clear lines indicating who are the actual patent owners and inventors of the products’ designs and concepts. If those lines of patent ownership and invention are vague or your ideas get exposed publicly before patent filings, the product launch could become mired in litigation, possibly causing the product to fail completely. Also, as companies move manufacturing out of China due to the tariff situation, they should consider how their IP will be protected as they evaluate other manufacturing sites around the globe.

1) What are the biggest risks for companies working with outside consultants and manufacturers during the development of a consumer product?

When developing or finalizing product design with an outside consultant or manufacturer (vendor) who may help in the development of the commercial product, it may become unclear who invented each aspect of the design. It is very important to file for patent protection before the company developing the product enters into any discussions with vendors.

If an application has not been filed before vendor involvement and if a vendor contributes to the invention, it may partially belong to the vendor unless there is an agreement that requires the vendor to assign the rights back your company. Without such an agreement and/or prior patent protection, the vendor may claim that the product concept is theirs and try to sell it to other customers.

Also, when vendors are helping other competitors solve similar problems or manufacture a similar product, your ideas may leak intentionally or inadvertently into your competitors’ products. For example, while visiting the vendor, a competitor may happen to see your product sample that you are developing with the vendor’s help. That competitor may then launch a product very similar to yours before you get the chance to publicize, officially launch, or file for patent protection for your product.

02/20/19

DAVID L. LADD 1961-1963

David L. Ladd was born in Portsmouth, Ohio, on September 18, 1926. He attended Kenyon College for a year before serving in the U.S. Army. He received a bachelor’s degree from the University of Chicago, attended Illinois Institute of Technology, and returned to the University of Chicago to earn his law degree. After graduation he practiced patent, trademark, and copyright law in Chicago for about eight years.

President John Kennedy appointed Ladd commissioner of patents, and he took office on April 17, 1961. At 34, he was the second youngest person to hold the position. The youngest was William Bishop, who was appointed at age 31 in 1859.

02/13/19

Robert C. Watson was born in Washington, D.C., on November 21, 1890. His father was a patent attorney. 

Watson received a bachelor’s degree in civil engineering from Lehigh University, where he was an intercollegiate heavy-weight wrestling champion. His first job was in Baltimore with the Pennsylvania Railroad. He earned a law degree from Georgetown University in 1917.

He served in the U.S. Army in World War I. In 1922 he married Sarah Latimer, daughter of a U.S. senator from South Carolina. Watson practiced patent law in Washington for about 30 years until President Dwight Eisenhower appointed him commissioner of patents. He took the oath of office on February 18, 1953.

02/11/19

Inventing Venice: An Urban and Environmental Innovation Model from the Lagoon City

Richard L. Hindle

Innovation in physical urban infrastructure is a vital component of city making in an era of sea level rise, climate change, and rapid urbanization. Venice pioneered an urban and environmental innovation model in the 14th and 15th century, successfully negotiating the cities complex geography and the sociotechnical processes that characterized Renaissance urbanism. A review of early inventor rights issued in the city suggests that the process of patent innovation facilitated urbanization of the Venetian lagoon through development of advanced drainage, dredge, irrigation, and reclamation infrastructure, essential to the city’s survival. In addition to granting patents for new inventions, the Venetian government established expert review for proposed inventions, supported prototyping and testing for untried technologies, and used patent rights to attract experts with novel inventions from across Italy and Europe. These processes, in addition to the extensive dossier of patents issued in Venice, substantiate the primacy of innovation in the process of urbanization and revel an urban innovation model. Patent law later spread along Venetian trade routes through Europe, where they were also employed in economic modernization, and the construction of urban and regional infrastructure. Interestingly, similar process can later be observed throughout Europe and the United States as patent rights were constitutionalized.

02/06/19

JOHN A. MARZALL 1949-1953

John A. Marzall was born on March 8, 1896, in Chicago and practiced law there after living in New York. President Harry Truman appointed him commissioner of patents, and he took the oath of office on December 2, 1949, the day after Commission Kingsland resigned.

A highlight of Marzall’s tenure was the 1952 Patent Act, generally considered at the time to be the most important patent statute since the examining system started in 1836. The House Judiciary Committee published a preliminary draft of the legislation in 1950 and requested comments from the public. The committee circulated another draft in 1951 and held hearings.

02/04/19

Rebutting §102-rejections under Net MoneyIN v. VeriSign, as illustrated by opinions from the Patent Trial and Appeal Board (PTAB)

Tom Brody

Net MoneyIN (Fed. Cir. 2008) is one of the few Federal Circuit cases available that relate to anticipation (35 U.S.C. § 102). Fortunately, opinions from the Patent Trial and Appeal Board (PTAB) provide a family of fact-patterns, where these opinions demonstrate that Net MoneyIN can be applied to a variety of situations that are much greater than the facts of the Federal Circuit case. Net MoneyIN has been successfully applied in cases before the Board, to compel the Board to reverse in the following situations. These situations include: (1) The prior art reference identifies two or more of the claim elements in two or more distinct locations, e.g., in Example One and Example Two, in Figure 1 and Figure 2, or in Example One and in the background information of the prior art reference; (2) Anticipation rejection based on “picking and choosing” a claim element from a disclosure in the prior art reference, where the disclosure takes the form of a long list of chemicals or other substances; (3) Where the arrangement of parts (structures) in the prior art device is different from the arrangement of corresponding parts that is required by the claim; (4) Where the examiner, in imposing a §102 rejection, had invoked a doctrine that belongs not to the anticipation inquiry, but instead to the obviousness inquiry. This article is a manual that provides the practitioner with tools for rebutting §102-rejections that go far beyond those provided by Verdegaal Bros. v. Union Oil Co. of California (Fed. Cir. 1987). Regarding the situation where the arrangement of parts are different, it is useful to remember that there exist at least three types of claim elements – structural elements, functional elements, and elements that describe arrangements of structures.

01/23/19

LAWRENCE C. KINGSLAND 1947-1949

Lawrence C. Kingsland was born in St. Louis on April 11, 1884. He attended Washington University in St. Louis and received a degree from Washington University School of Law in 1908. 

For the next 39 years he practiced patent law in St. Louis, including as the first-named senior partner in a law firm. At the request of the Department of Commerce he served as an adviser to the Philippines government on drafting that country’s patent and trademark laws.

President Harry Truman appointed Kingsland commissioner of patents, and he took the oath of office on September 10, 1947. Secretary of Commerce W. Averell Harriman, a later governor of New York and twice-unsuccessful candidate for the Democratic nomination for president, administered the oath.

01/22/19

The American Association of Patent Judges

The Honorable Hubert C. Lorin

We are pleased to announce the formation of The American Association of Patent Judges (AAPJ). Since March 2, 1861,1 when an appeal to three Examiners-In-Chief (EIC) in the Patent Office was first provided for, approximately 489 individuals have served as an EIC, or its descendant, an Administrative Patent Judge (APJ). In the fall of 2015, several members of the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office envisioned an educational and charitable organization to honor of all those EICs and APJs who have served and who continue to contribute to the stewardship of the patent provision in the Intellectual Property Clause of the United States Constitution. The AAPJ is the culmination of that vision.

01/16/19

CASPAR W. OOMS 1945-1947

Caspar W. Ooms was born on August 30, 1902, in Chicago. He attended Knox College and the University of Chicago School of Commerce and Administration. He received a law degree from the University of Chicago in 1927. 

Following graduation from law school he clerked for a judge on the Court of Appeals for the Seventh Circuit. Afterward he practiced law with various Chicago law firms until he entered government service. He specialized in patent litigation in courts throughout the United States, representing both patent owners and defendants. He argued three cases before the Supreme Court.

President Harry Truman appointed Ooms commissioner of patents, and he entered service on July 29, 1945. 

01/09/19

CONWAY P. COE 1933-1945

Conway P. Coe was born in Calvert County, Maryland, on October 21, 1897, and moved to the Washington, D.C., area at an early age. After receiving a B.A. from Randolph-Macon College he was hired as assistant examiner at the Patent Office but left five months later to serve in the U.S. Army during World War I. 

After the war he worked for a rubber company and then returned to the Patent Office as an assistant examiner. While at the office he earned a law degree from George Washington University. In 1923 he joined a law firm in Akron, Ohio, and later returned to Washington to open his own office. 

12/26/18

THOMAS E. ROBERTSON 1921-1933

Following Mr. Coulston’s term of office, which was the shortest on record, comes Mr. Robertson's, which was the longest [Note: While Mr. Robertson had the longest term as commissioner, Dr. Thornton was the longest-serving head of the Patent Office]. Having been appointed by President Harding, he served under Presidents Coolidge and Hoover and remained nearly four months under President Roosevelt.

Mr. Robertson was born May 7, 1871, in Washington, D. C., and educated in the local public schools. He studied in the George Washington University and the National University Law School, and holds honorary degrees from National University and Bates College.

12/19/18

MELVIN H. COULSTON 1921

Mr. Coulston’s short term of office is evidence, not of his unfitness for the position, but of a peculiarity of our political system. He was confirmed by the Senate on the evening of March 3, 1921, in the dying hours of the 66th Congress, to serve until the upcoming administration should appoint a Commissioner of their own choice.

Mr. Coulston is another Commissioner who came up through the ranks, having been appointed 4th Assistant Examiner February 17, 1902, and risen through the grades to First Assistant Commissioner prior to his Commissionership. He had also been Chief Clerk of the Patent Office.

12/17/18

The Journal of the Patent and Trademark Office Society Welcomes Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office

Alexander Sofocleous, Hung H. Bui, and Seahvosh Nikmanesh

Palatine was to Rome as our Journal is to intellectual property. Our Journal’s palatines followed a tradition of welcoming the incoming and farwelling the parting, thus apprising our guild. Our first Editor-in-Chief George Prescott Tucker, cleverly quoted: “Welcome the coming, speed the parting guest.”

We welcome the Honorable Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Formerly a Managing Partner for Irell & Manella LLP, Mr. Iancu was nominated by President Donald J. Trump on August 26, 2017, confirmed by the Senate on February 5, 2018 in a 94 Yea to 0 Nay vote, and began his first official day on February 8, 2018.5 On Febrary 23, 2018, Mr. Iancu was ceremonially sworn-in by Secretary of Commerce Wilbur Ross in the Madison Building, 1st floor, of USPTO’s Alexandria, VA headquarters. We thank Joe Matal, who performed the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO from June 7, 2017 to February 7, 2018 with grace and distinction, and we wish him the best as he continues his federal career.

12/12/18

ROBERT FREDERICK WHITEHEAD 1920-1921

The son of a successful farmer and lawyer, Mr. Whitehead was born February 28, 1869, near Lovingston, Virginia. He attended the public schools and the University of Virginia, having by the year 1893 acquired a number of degrees at the latter institution. He taught school for a time, and then specialized in mathematics for two years at Johns Hopkins University.

12/10/18

Time for a Midlife Makeover for the PCT
Will pending Trade Agreements give the necessary Push?

Markus Nolff

Will the patent provisions of the Trans-Pacific Partnership agreement (that are also incorporated into the Comprehensive and Progressive Agreement for Trans-Pacific Partnership agreement and which very likely will also part of any renegotiated NAFTA) which, inter alia, would further harmonize some areas of patent law and impose additional patentability & patent acquisition requirements, including cooperation and work sharing between patent offices, give the necessary push to expand the role and scope of PCT’s international phase, for example, by merging chapter I & II and introducing an International Certificate of Patentability.

12/03/18

Tribal Sovereign Immunity at the Patent and Trademark Office

Brandon Andersen

The America Invents Act was at least partially designed to weed out invalid patents through administrative proceedings. One such proceeding, inter partes review, is popular among challengers but criticized by patent holders for its high invalidation rate. Some disgruntled patent holders have discovered an old doctrine as a potential new tool to avoid inter partes review: tribal sovereign immunity.

As sovereigns, Indian tribes are immune from suit unless Congress abrogates their immunity or a tribe waives it. If that immunity extends to inter partes review, a non-sovereign can avoid review by assigning his patent to an Indian tribe willing to license the patent back to him (for a fee). While beneficial to patent owners, this use of tribal sovereign immunity undermines the purpose of the America Invents Act, and Congress may respond by restricting tribes’ immunity.

11/28/18

JAMES T. NEWTON 1917-1920

The chaotic condition of the rest of the world was reflected in the affairs of the Patent Office at the time when Mr. Newton became Commissioner. The personnel seemed to be leaving "en masse," some going directly into the military service, and others seeking transfers to the more remunerative positions in the war bureaus. Civil service registers were exhausted. For many months it became necessary to go into the highways and the byways to induce people to assume employment in the Patent Office at a salary less than the market price, so that the Office could somehow function, and in some way deliver service. This was the situation that confronted Commissioner Newton, a situation that arose from uncontrollable causes, external to the Office, and was precipitated without notice. It was his duty to make the best of this critical circumstance, and he did it with courage, unfailing purpose, and with exceptional poise and good nature.

11/26/18

Should You Appeal? A Look at Success Rates Before the PTAB on an Individual Rejection Basis

Ryan Pool

Imagine an applicant faced with a final Office Action containing rejections with which they do not agree. They consider appealing the rejections, but only want to proceed to appeal if they feel they have a better than average chance of winning. Their application faces a rejection under 35 USC § 112 for Enablement and for lacking Written Description. Their application is also rejected under 35 USC § 102 and 103. This should be relatively easy to imagine as it is commonplace. From October 2016-October 2017, the Patent Trial and Appeal Board (PTAB) reported an intake of 11,796 appeals.

Deciding whether to appeal is a rather consequential decision, both in time (pendency remains around 18-24 months on average before a decision is rendered) and in money (government fees alone are almost $3,000 for large entities). Although every case is different and favorable facts make for favorable decisions, it remains helpful and informative to have a correct statistical perspective regarding likely outcomes before the PTAB.

11/21/18

THOMAS EWING 1913-1917

The name Ewing has been connected with public life and governmental functions over a considerable period of years. Thomas Ewing, Commissioner Ewing's grandfather, was the first Secretary of the Interior Department, having been appointed by President Zachary Taylor in 1849 when the Department was formed. Secretary Ewing was an eminent lawyer and was twice in the Senate from Ohio, having been in that body at the time the Patent Act of 1836 was under consideration and when it was passed, and there is a family tradition that he was active in the preparation of the bill. Secretary Ewing was also Secretary of the Treasury during the administration of President William Henry Harrison.

11/19/18

Three New Metrics for Patent Examiner Activity: Office Actions per Grant Ratio (OGR), Office Actions per Disposal Ratio (ODR), and Grant to Examiner Ratio (GER)

Shine Sean Tu

The current metric for examiner prosecution activity is allowance rate, which is calculated by dividing the total number of allowances by the sum of the allowances and abandonments (allowance rate = total allowance / (total allowances + total abandonments)). Importantly, however, allowance rates do not consider an examiner’s pending docket. Specifically, allowance rates do not fully capture if the examiner is simply writing office actions thereby prolonging prosecution or allowing cases. This study rectifies this failure by creating and analyzing a dataset that captures every active examiner’s current docket. Calculating the Office Action per Grant Ratio (OGR = Total # of Office Actions / Total # of Grants), this study’s new metric for measuring patent examiner activity, captures not only pending cases, but also helps decipher which examiners are spending their time allowing cases or writing Office Actions. This new metric indirectly helps determine if specific examiners are prolonging prosecution compared with peers within their Art Unit, Workgroup and Technology Center. Using the OGR score, this study elucidates how examiners in certain art units and Workgroups behave- specifically, which examiners in certain art units are more likely to write office actions or allow cases. To calculate the OGR, this study captures 8,537,660 office actions, 2,812,177 granted patents and 1,255,552 abandonments from 9,535 examiners from January 1, 2001 to June 8, 2017.

11/15/18

EDWARD BRUCE MOORE 1907-1913

Edward Bruce Moore was born at North Anson, Maine, December 25, 1851. At the age of fourteen he came to Washington, serving as a page in the Senate. In 1876 he became interested in newspaper work, becoming editor of the Washington Daily News and the Washington Daily Telegraph. He was admitted to the bar in 1881, and in 1883 entered the Patent Office as an Assistant Examiner in Division 1.

11/13/18

PTAB Practice Tips Post-SAS

James A. Worth and David P. Ruschke

On April 24, 2018, the Supreme Court held that a decision of the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) proceeding may not institute on less than all claims challenged in a petition for review. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018) (“SAS”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Prior to SAS, most panels exercised the discretion to institute only on those claims or grounds presented in the petition for which the PTAB determined a reasonable likelihood that the petitioner would prevail, pursuant to then-existing procedures. See SAS, 138 S. Ct. at 1354 (discussing the procedural history and 37 C.F.R. § 42.108(a)). Now, under current guidance, if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition. Guidance on the impact of SAS on AIA trial proceedings (USPTO Apr. 26, 2018), available at https://www.uspto.gov/patents-applicationprocess/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.

10/31/18

FREDERICK INNES ALLEN 1901-1907

Born at Auburn, New York, January 19, 1859, Frederick Innes Allen came from a prominent family of that city. Graduating from Yale in 1879, he received a class prize in mineralogy. He studied law and was admitted to the bar in 1882, beginning the practice of law in Auburn, where he remained until appointed Commissioner of Patents by President McKinley in 1901.

10/29/18

A COMMON SENSE APPROACH TO IMPLEMENT THE SUPREME COURT’S ALICE TWO-STEP FRAMEWORK TO PROVIDE “CERTAINTY” AND “PREDICTABILITY”

Hung H. Bui

Concepts and ideas are not patent-eligible, but methods employing those concepts and ideas may well be. Like ideas themselves, “abstract ideas” are not patent-eligible, but suffer much worse fate — these “abstract ideas” suffer the same “existential crisis” as all of us and, worse, levitate in purgatory before our better angels cogitate (1) “what makes an idea abstract” and (2) “what constitutes an abstract idea.” But the truth is: “no one understands what makes an idea ‘abstract.’” That did not stop us from searching for a legal construct to address these questions and to explore methods employing an “abstract idea” for patent eligibility. Like the myth of Sisyphus, we do because we must — even if those constructs failed and failed again, year after year.

In Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court set forth an analytical two-step framework to determine whether a claim is directed to a judicial exception, i.e., an “abstract idea.” Since Alice, however, the Federal Circuit, the district courts, and the United States Patent & Trademark Office (USPTO) have all struggled to implement the Supreme Court’s Alice two-step framework in a predictable and consistent manner. For example, the Federal Circuit has issued several precedential decisions for patent eligibility of computer-implemented (software-related) and business method inventions under 35 U.S.C. § 101, including: (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); (2) Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); (3) Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); (4) McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016); (5) Amdocs (Israel) Ltd. v. Openet Telecom, Inc. 841 F.3d 1288 (Fed. Cir. 2016); (6) Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017); and (7) Visual Memory LLC v. Nvidia Corp., 867 F.3d 1253 (Fed. Cir. 2017). However, none of these precedential decisions provides sufficient guidance as to what aspect of a claimed invention suffices for the claim to transition from ineligible to eligible.

10/24/18

CHARLES HOLLAND DUELL 1898-1901

Charles Holland Duell, twenty-fifth Commissioner of Patents, was the illustrious son of Robert Holland Duell, the fifteenth Commissioner of Patents.

Charles was born in Cortland, New York, April 13, 1850. Being graduated in 1872 from the Law Department of Hamilton College, he was soon thereafter admitted to the bar, and began the practice of law in New York City. Here he continued until 1880, with the exception of a short term as examiner in the Patent Office in 1875-1876. In 1880 he removed to Syracuse and continued the practice of law there, making a specialty of patent law, until called to Washington in 1898 as Commissioner of Patents. He returned to New York in 1901 to resume private practice until 1904, when he again returned to Washington to accept an appointment at the hands of President Roosevelt as Associate Justice of the U. S. Court of Appeals of the District of Columbia. He continued on the bench until 1906, returning again to New York as senior member of the firm of Duell, Warfield and Duell. His interest with this firm continued until his death on January 29, 1920.

10/22/18

Part of a Larger Whole: How Combination Patents Show That Patent Exhaustion is Part of Patent Misuse

David B. Orange

The Supreme Court recently explained that selling a patented product “marks the point where patent rights yield to the common law principle against restraints on alienation.” This paper considers the law governing when an owner has a patent on a combination of parts, and sells one of the parts to a consumer. Currently, when a patent owner sells part of a patented combination, we apply an analysis that is similar to indirect infringement, and if no infringement exists at the time of sale, we assign all rights to the patent owner because we have only considered the exhaustion doctrine as though it were a distinct area of law. However, the present approach ignores that the sale was authorized and unconditional, so even if the entire patented combination was not exhausted, the consumer should not be in the same position as if the sale were unauthorized. Consequently, the exhaustion of combination patents leads to the same result as in Impression Products. 

10/02/18

JOHN S. SEYMOUR 1893-1897

John Seymour was born on September 28, 1848, and came from Colonial stock, his earliest ancestors in this country being found among the first settlers of Hartford, Connecticut. The first years of his life were spent at Whitney's Point, New York, his schooling being in the common schools and the Whitney's Point Academy. After graduating from Yale College and then studying law at the same institution, he returned to the place of his ancestors in Connecticut and there took up the practice of law in Norwalk. He held a number of prominent positions in that state before he was appointed Commissioner of Patents by President Cleveland during the latter's second administration.

10/01/18

The Patent Provisions of TPP: An Endpoint or should be just a mere Starting Point for more and better Patent Protection in a revised NAFTA

Markus Nolff

In his 2018 State of the Union Address, President Trump stated that, “one of my greatest priorities is to reduce the price of prescription drugs.” Few sentences later, President Trump stated that he, “will fix bad trade deals and negotiate new ones,” and “will protect ... American intellectual property through strong enforcement of the trade rules.” One week after the State of the Union Address, the Council of Economic Advisers released a study containing the following recommendations: (i) address high domestic prices by fostering better market price competition domestically and, (ii) to incentivize development of new (inventive) pharmaceutical products by addressing the low overseas pricing of pharmaceuticals which takes little account of the cost of their research and development (hereinafter “R&D”).

09/27/18

WILLIAM EDGAR SIMMONDS 1891-1893

Descended through his father from Daniel Webster, and through his mother from Roger de Coigneries, who came to England with William the Conqueror, it might well be expected that William Edgar Simmonds would make his mark in the world. Also he was another "Connecticut Yankee," being born at Canton, Connecticut, November 24, 1842.

His father having died when he was three years old, the mother succeeded in giving the children an excellent education. At the age of 16 William worked and contributed to the support of the family, saving enough besides to finance a normal school training for himself. From 1860 to 1862 he taught school, and then entered the Union army as a volunteer.

09/24/18

Extraterritorial Jurisdiction vis-à-vis Sovereignty In Tackling Transnational Counterfeits: Between a Rock and a Hard Place?

Qingxiu Bu

Transnational counterfeiting has grown tremendously with the increasing interdependence of global economy. The process of illicit financial flow has outpaced the growth of mechanisms for global governance, and the resultant deficiency produces regulation vacuum where the cross-border crime can thrive. It is very necessary to consider the effect of service process of foreign defendants getting evidence. As illustrated in Gucci’s case, the U.S. court face great challenges in addressing extraterritorial jurisdiction. In the context of extraterritorial discovery, it remains unresolved how to prioritize competing jurisdictional claims. Remediation is compromised due largely to sensitivities over national sovereignty. The broad interpretation of sovereignty makes the Bank of China (BoC) operate behind a firewall that keeps it immune from the jurisdiction of U.S. courts, leaving the brand owners vulnerable. A deadlock arises between proper exercise of extraterritoriality and critical response to the current increasingly complex cross-border counterfeiting. At stake are fundamental questions of conflict of laws. A valid nexus is indispensable to justify a U.S. court in applying the Federal Rules of Civil Procedure (FRCP) 45. Given the unviable course of action via the Hague Evidence Conventions, it is argued that greater legal protections for U.S. entities via subpoenas are a more feasible solution. In response to the global challenge, more multipronged approaches should be adopted to combat the transnational counterfeiting crime.

09/19/18

CHARLES ELLIOTT MITCHELL 1889-1891

Born May 11, 1837, at Bristol, Connecticut, Charles Elliott Mitchell was of ancestry prominent in the history of New England, being descended on his father's side from William Mitchell, a soldier of the Revolutionary War, and on his mother's side from the Rev. Thomas Hooker, founder of the Connecticut colony, which, according to the historian John Fiske, "marked the beginnings of American democracy."

09/17/18

Compensation for Non-pecuniary Damage of Trademark Infringement in Taiwan

Judge Jr-Da Fan

Trademark refers to the texts or signs that specific enterprises use to distinguish their products or services from those of other enterprises. For example, the name “Windows” indicates the computer operating systems developed by Microsoft, and “McDonald’s” refers to the hamburgers and other fast food produced by a specific restaurant brand. For a trademark to distinguish the products or services of one enterprise from those of others, the brand trademark established by that enterprise must not be imitated by others. For example, if other companies are allowed to sell fast food under the name McDonald’s, this damages the food-selling interests of the original company. Moreover, if the goods or services labeled under specific trademarks do not maintain their favorable quality, then consumers do not associate their past positive experiences with present purchase perceptions, thereby lowering their intention to purchase the goods or services of the original brands at higher prices. Therefore, when enterprises establish a valuable trademark and cultivate associations of goodwill with it, they must not lower the quality of their goods or services, to protect their investment in the trademark. Therefore, in trademark infringement litigation, if trademark infringement is proven or if the trademark used by the defendant has a likelihood of being confused with that of the plaintiff, irreparable damage to the goodwill associated with the plaintiff’s trademark can often be accounted, because trademark infringement is a type of continuous infringement with an irreparable nature.

09/12/18

BENTON J. HALL 1887-1889

As a young man, having received but a limited collegiate and academic training, Benton J. Hall was greatly stimulated and broadened by the potent influence of a class of men, newcomers into Iowa in the decade and a half preceding the Civil War, by whom he was soon to be accepted as an equal and afterwards recognized as a leader. The influence of this galaxy of luminaries colored Mr. Hall's whole life and included men destined to become Senators, Cabinet members, Federal judges, and Supreme Court Justices.

Benton J. Hall, another in the long list of the sons of Ohio who achieved promise, was born January 5, 1835, at Mt. Vernon in that state. The father took his family to Iowa in 1840 and became very prominent in governmental affairs of the state, being one of the first Justices of the Iowa Supreme Court. Young Hall followed in his father's footsteps, and the many eulogies bestowed upon the father were later merited and won in an equal or even greater degree by the son.

09/10/18

Krafting TC Heartland: A Legislative Response to Venue Shopping

Antonio DiNizo

In the world of patent litigation, the Eastern District of Texas reins king with nearly forty five percent of all patent infringement cases nationwide filed within the district in 2015. While being a small relatively obscure area of Texas, the Eastern District and its courthouse in Marshall, Texas have developed a reputation for attacking some of our country’s biggest corporations and well-respected patent litigators.

In recent years, the Eastern District of Texas has come under increased scrutiny for attracting a special kind of patent owner, Non-Practicing Entities (“NPEs”) or patent troll. While the Supreme Court’s decision in TC Heartland v. Kraft Foods significantly restricts the ability for NPEs to pursue litigation in the Eastern District of Texas, this Note explores how Congress could craft a legislative solution to prevent abusive NPE litigation.

09/04/18

The Wright Brothers: Would Their Patent Survive Today’s Patent Law Rigors? Doubtful

Charles Shifley

“The patentees, Orville and Wilbur Wright, were the first men to actually fly!” So begins an appellate brief in perhaps Orville and Wilbur Wright’s most famous patent infringement case, Wright Co. v. Herring-Curtiss Co., 211 F. 645 (2nd. Cir. 1914). Imagine getting to write a line “the first men to ... fly!” exclamation point included, as the first line of a brief for clients.

On the strength of the facts, and excellence of legal work, the court in the Wright case affirmed as valid the central U.S. patent of the Wrights, declared the Wrights to be pioneers in flight, and resolved that airplane wing ailerons and a tail rudder were part of their invention. Creative legal defenses, such as that a rudder of the Curtiss flying machine was not an infringement because it was only used sporadically, were put to rest memorably: e.g., “a machine that infringes part of the time is an infringement.”

08/29/18

M. V. B. MONTGOMERY 1885-1887

Martin Van Buren Montgomery—lawyer, legislator, jurist—was the 20th Commissioner of Patents.

He was born in the township of Eaton Rapids, Michigan, October 20, 1840. The early part of his life was spent on his father's farm, attendance at the district schools taking place only in the winter months, as was the case with other farm boys who later became Commissioners. He studied law, was admitted to the bar in 1865, and immediately began to practice. His talents were at once recognized, and he filled, successively, different public offices of increasing importance.

08/27/18

 

A Tribute to Judge Giles S. Rich

A Tribute to Judge Giles S. Rich

John F. Witherspoon

One summer night in 1926, while staying at the Willard Hotel, Giles Sutherland Rich made a decision that set in motion a chain of events that account for our being here tonight.

As a young man, he wanted to be a pilot, because, he said, he thought commercial aviation “might have a future.” But he failed his eye exam. And so he had to look for a different career.

His father was a patent lawyer in New York. When he was growing up, Giles often visited his father’s office and was intrigued by what he saw.

In the summer of 1926, he drove his father to Washington to interview some examiners. On the trip, he learned more about what his father did and why he liked it.

08/22/18

BENJAMIN BUTTERWORTH 1883-1885 and 1897-1898

The 19th Commissioner of Patents was born near Maineville, Ohio, October 22, 1837, of Quaker ancestry, one of his maternal ancestors, John Linton having emigrated to Pennsylvania with Wm. Penn. His father emigrated to the Miami Valley from Virginia in 1814.

The boy, Benjamin, was the youngest son and worked on his father's farm until the age of 18. He was educated in the common schools of Warren County, Ohio, and in the academy at Maineville, taking his college work at the Ohio University at Athens. After that he studied law and was admitted to the Ohio Bar in 1861 at the age of 24.

08/21/18

Rossman Award 2018

Joshua Schwartz

The Rossman Committee was privileged to present the annual Joseph Rossman Memorial Award during the 2018 Annual Meeting of the Patent and Trademark Office Society. The award was established in 1972 by the Society and the family of Dr. Joseph Rossman. Joseph Rossman started his career as a patent examiner and was Editor-in-Chief of The Journal back in the 1930s. He had degrees in chemical engineering and law, as well as a doctorate in psychology. In addition, Dr. Joseph Rossman was an author with a life-long interest in creativity, engineering and law. Dr. Joseph Rossman was the author of many articles in the Journal from the 1930s through the 1960s. Because the Journal was such a big part of Dr. Rossman’s life, his family approached the Society with the idea of establishing the Rossman Award in 1972. The Society enthusiastically embraced the idea and the rest is history. The Rossman Award is given to the author of the article in the Journal that, in the opinion of the judges, makes the greatest contribution to the fields of Patents, Trademarks or Copyrights. Factors that are taken into consideration include originality, timeliness of the subject, depth of research, accuracy, readability, and the potential for impact on the existing system.

08/15/18

EDGAR M. MARBLE 1880-1883

Rising from the ranks, Mr. Marble was appointed Commissioner of Patents on April 28, 1880, by President Hayes, and served until 1884.

It was a most interesting period. The reconstruction following the Civil War was just ending, and many of the great figures of the war were still on the stage. In the field of invention, electricity was just emerging. In the practice of patent law, routine was just established.

Edgar M. Marble's qualifications for the position of Commissioner of Patents were found in the record he had already established in the Interior Department, in the position he had occupied up to that time, for executive capacity, clearness and correctness of decision and a thorough grounding in general law.

08/13/18

Federico Award 2018

Joshua Schwartz

The Federico Committee was privileged to present the 2018 Pasquale J. Federico Memorial Award to Teresa Stanek Rea during the 2018 Annual Meeting of the Patent and Trademark Office Society.

In 1993, the SOCIETY established the Pasquale J. Federico Memorial Award. The Federico Award is intended to recognize outstanding contributions to the Patent and Trademark Systems of the United States of America. It may be given to an individual, a group of individuals, a corporation or an institution. Awards to individuals may be made posthumously. No more than one award may be given in each year. Anyone may make a nomination. The award is named in honor of Pasquale J. (Pat) Federico who was an institution within the Patent and Trademark Office. Pat entered then Patent Office in 1923 as a junior examiner in Division 43. By 1935, he was the Assistant Chief of his division and he became the Division Chief in 1940. He was appointed to the Board of Appeals in 1947 and remained there until his retirement from the Office in 1977. Pat Federico was a prolific author of articles dealing with intellectual property. Perhaps his greatest achievement was writing the first draft of the 1952 Patent Act. He was also, according to Giles Rich, the man most responsible for getting the 1952 Patent Act through Congress and enacted into law. The first Federico Award was presented to the late Giles S. Rich, who had served on the Court of Appeals for the Federal Circuit and its predecessor court, the Court of Customs and Patent Appeals for over four decades. Honorees from other years include Nick Godici, Paul Michel, Donald Banner, Charles E. Van Horn, Pauline Newman, C. Marshall Dann, Herbert Wamsley, Helen Wilson Nies, Mike Kirk, Tom Arnold, Howard T. Markey, Rene D. Tegtmeyer, Isaac Fleischmann, John Whealan, Anne Chasser, Raymond Chen, Bernie Knight, and Mark Lemley.

08/08/18

General Paine was another Civil War hero to become Commissioner of Patents. Born at Chardon, Ohio, February 4, 1826, he was the seventh in line of descent from Stephen Paine, who emigrated from Hingham, England, to Hingham, Massachusetts, in 1638. He graduated from Western Reserve College at the age of 19, at the head of his class, taught school in Mississippi, and then took up the study and practice of law in Cleveland, Ohio. He married in 1850. 

08/01/18

ELLIS SPEAR 1877-1878

One of the many who, after the Civil War, were anxiously looking about for civilian employment and means of making a livelihood for themselves and their families was a young officer but lately retired from the Army of the Potomac where he had achieved a reputation for courage and ability. At the age of 31 a Brevet Brigadier General, and having received from Congress on two occasions the supreme recognition of merit and valor on the field of battle, General Spear left the military service and entered upon his new duties in the Patent Office with enthusiasm and devotion.

07/30/18

Applying the de minimus Exception to Sound Recordings: Digital Samplers Are Neither Thieves Nor Infringers

Kayla Mullen

When a new song plays on the radio, listeners may experience a feeling of nostalgia due to the use of familiar chords that exist in the public domain. Music artists are now able to create this feeling and a resulting hit by taking sound bites from older songs and mashing them with new material, which is known as “sampling” in the music industry. “Sampling” is defined as “the actual physical copying of sounds from an existing recording for use in a new recording, even if accomplished with slight modifications such as changes to pitch or tempo.” This method of appropriation involves physically taking from a prior work, which sets sound recordings apart from other copyrightable works. Sometimes the prior work is unrecognizable, but fragments are still there. Sounds that may be undetectable to the average ear, in some cases less than a second in length, are seamlessly incorporated by the technological advances that have made digital sampling commonplace in the music industry today. While copyrighted sound recordings have been protected for over forty years by the Copyright Act of 1976, whether digital sampling constitutes copyright infringement may now depend on where in the country a copyright infringement case is litigated.

For over ten years, Bridgeport Music, Inc. v. Dimension Films was the only federal court of appeals decision to address whether the de minimis exception applied to copyrighted sound recordings. In that case, the Sixth Circuit established a bright-line rule that any copying of a sound recording, even a trivial sample, constituted prima facie copyright infringement. On June 2, 2016, the Ninth Circuit held in VMG Salsoul, LLC v. Ciccone that the de minimis exception, which excludes copying that is trivial or insignificant from actionable infringement, applies to all copyrighted works, including sound recordings. The court found that Madonna’s hit song Vogue digitally sampled .23 seconds from the song Ooh I Love It (Love Break), but the court did not find that this sampling constituted copyright infringement. Now, the question is whether a de minimis exception applies, and whether it should apply, in cases of copyrighted sound recordings.

07/25/18

ROBERT HOLLAND DUELL 1875-1876

Robert Holland Duell was a native of the State of New York, born in Warren, on December 20, 1824. He studied in Syracuse Academy and took up the profession of law, being admitted to the bar in 1845. Three years later he removed to Cortland and established himself in law there, continuing to make this his home for the greater part of his later life, to the time of his death on February 11, 1891.

Mr. Duell early became interested in politics and became District Attorney of Cortland County in 1850, which office he held until 1855, when he became District Judge. After serving four years in this capacity he was elected as Republican representative to Congress. In all, he spent eight years in Congress, 1859-1863, and 1871-1875.

07/23/18

Reverse Payment Patent Settlements in Antitrust

Kelly L. Moulla

In the United States, as well as in the European Union, reverse payment patent settlements, or so-called “pay-for-delay agreements,” are neither addressed by domestic competition laws, nor mentioned in international competition agreements. As those agreements seem to be out of the reach of competition laws, patent holder pharmaceuticals frequently enter into such contracts with their potential competitors, generic manufacturers, in order to benefit from their monopoly for the longest time possible, by delaying their competitors’ product entry in the market. In fact, as a patent confers its owner market exclusivity rights for a long, though limited, period of time, conciliating competition law and such intellectual property right can be challenging. Due to the lack of adequate legislation, domestic courts in both the U.S. and the E.U toiled to obtain any resolution on related matters, rendering conflicting and confusing judgments. In international intellectual property law, the governing TRIPS agreement briefly mentions competition law in the licensing of intellectual property, but does not go as far as creating a regime for pay-for-delay agreements in regard to competition rules. On one hand, the harm among consumers and healthcare providers, who have to bear the high cost of patented drugs, when they could potentially benefit from the generic drug’s reduced price, is calculated in millions of dollars each year. On another hand, those blurred lines can also harm pharmaceutical companies, as they may, or may not, be subjected to extremely burdening fines at the outcome of expensive trials. In a globalized economy, the lack of clear regulations on one hand, and international harmonization on the other hand, can cause tremendous damages to pharmaceutical companies, and can therefore affect the health market internationally.

07/18/18

JOHN MARSHALL THACHER 1874-1875

This Commissioner stands in a unique position in that he entered the Patent Office as a clerk and rose through the ranks to the top. He is an excellent representative of the average citizen who performs conscientiously and well the duties which come to him, and leaves upon the sands of time, footprints which are both few and faint. There is no evidence that Mr. Thacher took any active part in politics, and he seems to have received his appointment for merit.

He was born at Barre, Vermont, July 1, 1836, a son of the Rev. Joseph and Nancy A. Thacher. After graduating from the University of Vermont in 1859 he taught school, and in the Civil War served as a captain in the Vermont Volunteers.

07/17/18

No Credit Where Credit Is Due: Exploitation in Copyright

Gia Velasquez

Alan Lomax, a folklorist and twentieth-century field collector of music, has been credited as “unlock[ing] the secrets of this kind of music” by Bob Dylan, “the man who is more responsible than any other person for the twentieth century folk song revival” by Pete Seeger, and “a man who stood for the equity of people’s culture.” He has not, however, been described as a copyist or plagiarist. Some may baffle at this suggestion: surely his contributions to music, evidenced by his posthumous Grammy Trustees Award in 2003 and National Medal of Arts from President Ronald Reagan in 1986, free him from the purview of such negative connotations.

The purpose of this paper is not to discredit Lomax, nor to criticize his methodology. Without his research, music of groups such as cowboys, convicts, slaves, workers on American railways, and creoles would have likely been lost. Rather, this paper is meant to highlight some of the many occasions where original artists have not received credit for their works. These stories are known due to technological developments that increase the accessibility of art, such as Lomax’s, but some have inevitably been lost.

07/11/18

MORTIMER D. LEGGETT 1871-1874

General Mortimer D. Leggett, the thirteenth Commissioner of Patents, while demonstrating unusual ability in several fields of activity, came into his greatest prominence in his military career, and it is as a soldier that he is most widely known.

He was a warm friend of Gen. U. S. Grant and it is said when Grant became president Gen. Leggett was offered several desirable positions, but stated that there was but one particular office which he would like to hold and if it became vacant he would be glad to be considered for it, and that was the office of Commissioner of Patents. When this office became vacant by the resignation of Mr. Fisher, Gen. Leggett was appointed, his term extending from January 16, 1871, until his resignation November 1, 1874.

07/09/18

Two’s Company: The Rise in Chinese PCT Participation and What it Means for Japan

Kevin Eugene Thomas Cunningham Jr.

Japan leads the rest of Asia and much of the world when it comes to participation in the Patent Cooperation Treaty in both total applications as well as national phase entries. However, China is swiftly making strides in its own patent regime, and has overtaken Japanese participation in the PCT in many key industries. This paper explores possible reasons why the Chinese have been able to overtake the Japanese in particular fields through looking at both historical and modern understandings of intellectual property rights. Additionally, this paper will explore whether or not Japanese PCT hegemony in Asia is waning in favor of China through statistical analysis of Japanese and Chinese filing trends in various PCT fields. Finally, this paper will examine whether Japan needs to take any affirmative steps to protect its PCT superiority, and if so, it will suggest potential actions to further that goal.

07/03/18

SAMUEL SPARKS FISHER 1869-1870

The occasion needed the man, and when it was announced that Col. Fisher was persuaded to take the Commissionership, satisfaction among the friends of the patent system was universal and heartfelt. His administration of the Patent Office marked a turning point in its history. He was instrumental in obtaining remedial legislation and instituting reforms in the processes and conduct of the Office that were not only essential to correct manifest abuses that had been gradually acquired, but which placed it upon a higher plane of usefulness and efficiency than it had ever attained before.

07/02/18

2 + 2 = 5: The Canadian Patent Agent Examination Board and the Doctrine of Essential Elements

Wissam Aoun

Tremendous confusion has revolved around the theory and application of the doctrine of essential elements in Canadian patent law ever since the Supreme Court of Canada first introduced the doctrine in Free World Trust c. Électro Santé Inc. In recent years, the Canadian Intellectual Property Office’s (CIPO) interpretation and application of the doctrine in its patent application examination guidelines has been the subject of considerable criticism from the Canadian patent profession. However, CIPO’s misapplication of the doctrine in recent years’ Patent Agent Qualifying Examination has received relatively little attention. This paper examines the application of the doctrine of essential elements in recent years’ Canadian Patent Agent Qualifying Examination. The analysis begins with a thorough and comprehensive review of the doctrine of essential elements under Canadian patent law. The analysis reviews the last ten years’ Canadian Patent Agent Examination, with a focus on recent years’ emphasis on the doctrine of essentiality. Despite the fact that the doctrine itself is still unsettled under Canadian law, the approach taken on recent years’ Patent Agent Exams is at best an ambiguous, and at worst an inaccurate application of the doctrine. This paper concludes by demonstrating that the concerns surrounding the doctrine of essentiality may be significant contributing factor to invalidity issues surrounding recent years’ Patent Agent Exams.

06/26/18

ELISHA FOOTE 1868-1869

Elisha Foote, the eleventh Commissioner of Patents, may be regarded as being the last Commissioner of the "old regime", prior to the revised laws of 1870. His term of office covered the period from July 25, 1868, to April 25, 1869, the interval between his term and that of his predecessor, Commissioner Theaker, being supplied by the Chief Clerk of Theaker's administration, who held the office of Acting Commissioner from January 20 to July 24, 1868.

06/25/18

Lexmark, The Overruling of Mallinckrodt and The Future of Restraints on Alienation For Patented Goods

James B. Kobak, Jr.

The Supreme Court in its recent Lexmark decision ruled unanimously (with Justice Gorsuch not participating) that a patent owner could not enforce contractual restrictions on resale of patented products in domestic transactions through patent infringement suits because all patent rights were exhausted by the first sale. This decision, authored by Chief Justice Roberts, rejected the theory, articulated by the Federal Circuit in Mallinckrodt v. Medipart, Inc. more than twenty five years ago: that a patent owner could circumvent exhaustion by conditioning a grant of its patent rights in a sales agreement as a legitimate means of obtaining compensation for the value of its invention. The Supreme Court decisively rejected the logic and the treatment of earlier precedent used in the Mallinckrodt opinion along lines that I had criticized at the time and others have criticized since to little avail, until now, over a quarter century later.

06/20/18

THOMAS C. THEAKER 1865-1868

The Civil War having given an impetus to creative genius as applied to the useful arts, entirely without precedent, it was to the problems of this period that the tenth Commissioner of Patents turned his attention, his term of office being recognized as one of the most important, in one aspect, in the history of the Patent Office.

06/18/18

Patent Holder’s Equitable Remedies in Patent Infringement Actions Before Federal Courts and the International Trade Commission

Richard L. Stroup, Susan Tull, Mindy Ehrenfried

A United States patent grants the patent holder the right to exclude others from practicing the claimed inventions within the territorial limits of the United States. When its patent is infringed, the patent holder can seek remedies in the form of monetary recoveries or equitable relief. This article addresses the equitable relief the federal courts or the United States International Trade Commission (“ITC”) can grant. That relief can be in the form of injunctions, orders, or even monetary awards, granted in equity.

The patent statute provides that an issued patent "shall contain … a grant to the patentee of the right to exclude others." It provides that the federal courts “may grant injunctions in accordance with the principles of equity.” And for actions before the ITC, the statute provides that that Commission “shall” enter an exclusion order, after a trial finding a violation, and “may” enter a preliminary order, before trial–if in both instances the patent holder can prove it has a domestic industry in the United States and the public interests or the President’s review do not preclude entry of such injunctive relief.

06/13/18

DAVID P. HOLLOWAY 1861-1865

The war-time commissioner was David P. Holloway, the ninth incumbent of that office.

Holloway was born in Waynesville, Ohio, on December 6, 1809. With his parents he moved in 1813 to Cincinnati where he attended the common schools. He learned the printer's trade at Richmond, Indiana, and for four years worked on the Cincinnati "Gazette". In 1832 he established the Richmond "Palladium" and was its editor for several years.

President Lincoln appointed him Commissioner of Patents on March 28, 1861, which position he held until August 17, 1865. During his term a number of procedural changes occurred in the patent laws, due, no doubt, largely to the efforts of others who preceded him. The act of March 2, 1861, establishing a permanent board of Examiners-in-Chief, was passed just before his administration began. (It may be noted that the permanent board first appointed by Commissioner Holt and established by the act of 1861 was found satisfactory in many respects though Commissioner Holloway criticized it on the ground that it had increased the work of the Commissioner instead of decreasing it, and recommended that its decision should be made merely advisory, the Commissioner to adopt them or not as he should see fit, whereby there would be but two appeals, i.e., from the primary examiner to the Commissioner, and from him to the Court.) This permanent Board of Examiners-in-Chief found great favor with applicants and attorneys.

06/11/18

Karen J. Dean Earns 2017 Leadership In Action Award from the Partnership for Public Service and the Leadership Alumni Board for Spearheading USPTO's Office of the Ombudsman 

Alexander Sofocleous

In May of 2016, the United States Patent & Trademark Office launched a pilot program for the USPTOs Office of the Ombudsman. The programs success was huge and, as a result, the Office was made permanent as of January 2017. The purpose behind the Office of the Ombudsman is to provide a neutral/impartial, independent, confidential, and informal resource to USPTO staff (e.g., employees, supervisors, senior executives, political appointees) for discussing any individual workplace concern or systemic issue. By providing a medium, like no other at USPTO, the Office of the Ombudsman helps, inter alia, provide Agency leadership with unfiltered information regarding persistent or systemic issues and provide expert conflict resolution services through facilitated discussions. The Office served more than 350 employees and provided the medium to raise issues about conflicts with between co-workers, disputes and poor communication between employees and their managers, concerns about performance appraisals, lack of respect and bullying.

06/06/18

PHILIP FRANCIS THOMAS 1860

Less than one year out of the long and colorful political career of Philip Francis Thomas was spent in the service of the Patent Office.

A native of the Eastern Shore of Maryland, he was born in Easton on September 12, 1810. Leaving the beaten political track of his Whig ancestors, he became a Democrat and was for half a century more or less active in Maryland politics. The son of a doctor, he studied law at Carlisle, Pennsylvania, was admitted to the bar in 1831, and at the age of 24 plunged into Maryland politics, finally getting himself elected to the legislature.

06/04/18

Global Patent Litigation: How and Where to Win, 2nd Edition

Asha Puttaiah

How does one decide where to sue if litigations can be contemplated in multiple countries? Consider a corporation with a national patent in a designated economic regional forum whose international competitor own a legal (but later) patent in their own country - what is the end goal of the corporation? Market entry or ownership? What are the chances of success? For that matter, what is considered success? Invalidation? Infringement? Licensing potential? The answers are ‘I don’t know,’ ‘Kind of, ‘No,’ and ‘Maybe’ – in any order you wish, There is no simple answer.

05/29/18

Waymo vs. Uber My Be the next Edison vs. Westinghouse

Chloé Margulis and Charles Goulding

During the late 1800’s, significant debate resulted from the development of new electric power supply systems. Whereas Thomas Edison supported growth of DC, direct current, supply, competitor George Westinghouse worked to make AC, alternating current, more widespread in both rural and urban settings. This War of Currents is mimicked in the current clash between Google and Uber over LiDAR technology in self-driving vehicles. The study discusses implications concerning Google vs. Uber and a comparison of this case to Edison vs. Westinghouse, its predecessor. A comparison is made between the similar decisions and actions of Nikola Tesla and Anthony Levandowski, both of whom left one company to work on personal technological ventures before being bought out by another company. An analysis is conducted concerning patents owned by Google, potential patent infringements, and the impact this case will have on our future, the growth of technology and autonomous vehicles, and intellectual property law.

05/23/18

WILLIAM DARIUS BISHOP 1859-1860

The seventh Commissioner of Patents, William Darius Bishop, was descended from old New England stock, his original ancestor, Rev. John Bishop, having emigrated from England about 1640. Alfred Bishop, his father, was a native of Connecticut, where he followed his duties as an extensive canal and railroad contractor. Commissioner Bishop was born at Bloomfield, New Jersey, September 14, 1827, while his parents were temporary residents of that state; but he returned to Bridgeport, Connecticut, which became his permanent residence.

05/21/18

Digital Resurrections Necessitate Federal Post-Mortem Publicity Rights

Meaghan Fontein

In the 1966 horror film Island of Terror, actor Peter Cushing’s character faced a predicament of dealing with computer-borne life forms resembling virtual humans. Fast-forward: 22 years after his death and 50 years after Island of Terror, Peter Cushing himself is resurrected as a virtual human to reprise his Grand Moff Tarkin character in Star Wars: Rogue One. While Cushing’s digital resurrection was seen as brilliant innovation by some, the performance upset many others-including his heir-who felt emotionally damaged from seeing a deceased person’s image repurposed for profit. Moral dilemmas, however, are merely secondary to the true threat of harm posed by digital resurrections: misappropriation for commercial gain. By definition, to misappropriate means to put to the wrong use.” Reaching beyond the deceased artist’s control to digitally resurrect their exact likeness for profit plainly fits the definition. Digital resurrections also risk the ancillary harm of causing reputational damage if a likeness is revived in an upsetting manner or bad taste. This science-fiction worthy scenario has created a need to uniformly recognize post-mortem publicity rights in one’s persona.

05/17/18

JOSEPH HOLT 1857-1859

It is said that the incumbency of the office of Commissioner of Patents by Joseph Holt was a minor incident in a notable career. And it might well be added that the selection of Judge Holt was a chance of party politics, as a number of such selections have been in the history of the Patent Office. The events leading up to his appointment are controversial and steeped in politics.

05/14/18

“What’s in a name? A parody by any other name would smell as sweet:” a dueling case study and comment

Kyle Serilla

We live in a post-post-modern culture where even an “it’s all been done before” attitude has been... well... done before. Our references are referencing other references. To say it another way, references in modern communication have been so stripped from their original context that they live in their own separate context. Nowhere is this as evident as the internet.

When a simple text will not do to express one’s indifference about where to have lunch, a savvy smartphone user may open a “gif” database app, type in their current feeling, and ultimately send an image of Judy Garland happily mouthing the text below “I don’t care! Or to express ones shock regarding the tale of a friend’s paper cut: Jimmy Stewart dramatically fainting. It is safe to assume to that the target youth audience for such apps have little awareness of the classic films where these scenes originated (In the Old Good Old Summer Time and Mr. Smith Goes to Washington, respectively). And that’s the point. The distance and randomness makes it absurdist fun. The reference lives on its own in a new context. The same can be said of memes (the stagnant brother to the gif) as well as the more widespread sound-bites and video-bites that dominate our political discourse.

Legos, the iconic children’s building blocks from Denmark, were once limited to living in plastic pins under bunk beds, but now live on computer, television, and movie screens as reincarnations of pop-cultures most famous characters. The Lego Group turned its slumping sales of the 1990s around in-part by embracing relationships with other kid-friendly brands. Today that merchandise itself is the star. Just look to LEGO Harry Potter videogames, LEGO Star Wars the television series, and The LEGO Batman Movie, itself a spin-off of The LEGO Movie. The LEGO entertainment brand shares a similar absurdist playfulness as the meme culture by again and again making the viewer aware that the world they are watching is not the original source but a wonderfully silly version where the content is as hallow as the blocks creating it.

05/09/18

CHARLES MASON 1853-1857

Born at Pompey, New York, October 24, 1804, the Honorable Charles Mason was the son of Chauncey and Esther Mason, grandson of Jonathan Mason and a descendant of Capt. John Mason, 1635. He graduated first in his class in the U. S. Military Academy, having as a classmate Robert E. Lee. He was appointed Second Lieutenant, Corps of Engineers, July 1, 1829, and served as Assistant Professor of Engineering at the Military Academy from 1829 to 1831. In 1831 he resigned from the army to study law in New York City, being admitted to the bar in 1832. He practiced law at Newbury, N. Y., from 1832 to 1834 and in New York City from 1834 to 1836. In 1835 and 1836 he was acting editor of the New York Evening Post.

05/07/18

The Future of the Compulsory License: Tick Tock and It’s Time to Eliminate it

Debbie Chu

On a quiet evening, a girl sits on her bedroom floor while tears trickle down her cheeks. She wipes them away as she listens to a song that reminds her of what she and her former boyfriend used to be. Meanwhile, in another part of town, strobe lights, streamers, and disco balls adorn a middle school gymnasium while students dance to a song with a thundering bass and a pounding rhythm. The difference between the two scenarios is obvious; the former is sad and the latter is happy. Both songs have the same lyrics, so what exactly is it that the first one triggers sadness and the second one evokes happiness? The answer lies in the rhythm of the song. The first one is composed of “keyboardsynth chords, bright, jangly guitars, effects loop, pitch shift, clock-ticking percussion, and elastic bassline” and has a “touching and bittersweet” tempo. The second one has a modern feel to it with a pop and punk style.

The song in the first scenario comes from Cyndi Lauper’s Time After Time, her first number-one hit in the U.S. Billboard Hot 100 chart in June 1984. This song received many accolades, among which are Rolling Stone & MTV’s “100 Greatest Pop Songs,” VH1’s “100 Best Songs of the Past 25 Years,” and “100 Greatest Songs of the 80s.” Music critics commended the song for its “masterpiece” and for being “the best and most significant song [Lauper] ever wrote or recorded.” The song in the second scenario comes from Quietdrive, an alternative rock band. Quietdrive released their cover of Lauper’s Time After Time in 2006. This version of the song ranked number 25 on the American Top 40 countdown show, and it was the soundtrack of a 2006 film, John Tucker Must Die as well as music for the trailer of a 2008 remake of the movie, Prom Night.

05/02/18

SILAS HENRY HODGES 1852-1853

Though he was commissioner for the brief space of only one year, Mr. Hodges was, for a considerable part of his life, actively connected with the Patent Office.

Silas Henry Hodges, lawyer, was born January 12, 1804, at Clarendon, Vermont. From 1845 to 1850 he was Auditor of Accounts of Vermont. He was appointed Commissioner of Patents in 1852 by President Fillmore. From 1861 to 1875 he was an Examiner-in-Chief in the Patent Office. He died in Washington, D. C., April 21, 1875.

04/30/18

Canadian Patent Agent Regulation Reform (Part 2), Governance, Self-Regulation and Canada’s Patent Professional Identity Crisis

Wissam Aoun

Only registered Canadian patent agents may represent others before the Canadian Patent Office. To qualify as a registered Canadian patent agent, candidates must complete an apprenticeship followed by successfully passing the Canadian patent agent examination. This article analyzes the current regulatory framework for Canadian patent agents. Based on a theoretical, historical and international comparative analysis, this article demonstrates that the current Canadian regulatory model has lost sight of its purpose and is symptomatic of a greater crisis of legitimacy plaguing the Canadian patent agent profession. The article highlights the need for greater reform of the Canadian patent agent regulatory framework in order to better serve the intellectual property needs of the Canadian public. This article concludes with a series of comprehensive recommendations for reform of the current Canadian regulatory framework.

04/25/18

Thomas Ewbank 1849-1852

Thomas Ewbank, third Commissioner of Patents, was born of humble parentage in Durham, England, March 11, 1792. He was apprenticed in boyhood to the trade of sheet metal working; and from 1812 to 1817 was employed as a tin-smith in London. There he developed the belief that monarchical institutions limited ones capabilities, and so he emigrated to the United States in 1819 and settled in New York. He then engaged in the manufacture of copper, lead and tin tubing for sixteen years and obtained patents thereon. Having attained a modest competency from the business of tube making, he devoted his entire attention in the next few years to travel, science, literature, the history of invention, and its future development. In 1845-48, he visited South America, not merely as a pleasure seeking traveler, but with a mind alert to the lessons to be learned from a wider experience of natural phenomena and the industrial arts of remote races. He returned with a collection of objects from Brazil that became widely known as the "Ewbank Collection." The lessons of this voyage were subsequently published in a volume entitled "Life in Brazil: A Journal of a Visit to the Land of the Cocoa and the Palm."

04/23/18

Does Patent law allow plaintiffs too many bites at the apple?

Jason D. Reinecke

The Federal Circuit’s current rule on claim preclusion doesn’t bar a plaintiff from bringing a second patent infringement lawsuit against the same defendant and accused conduct if the plaintiff alleges infringement of a different patent in the second suit. This Article argues that the Federal Circuit’s rule is inconsistent with the widely adopted transactional approach to claim preclusion as described in the Restatement (Second) of Judgments and adopted by most courts. This Article discusses three rules -the current rule, a rule that properly implements the transactional approach, and a middle-ground rule -along with their policy implications. In short, if the Federal Circuit adopted a rule consistent with the transactional approach, the goals of claim preclusion may be better served. A transactional rule would, among other things, provide parties with increased finality and reliance, often provide increased judicial and private litigation efficiency, and minimize the chance of multiple recovery and excessive recovery of damages. Because a transactional rule offers such advantages, the Federal Circuit’s current rule on claim preclusion warrants reconsideration by the Federal Circuit or the Supreme Court.

04/18/18

EDMUND BURKE 1845-1849

The second Commissioner of Patents was born at Westminster, Vermont, Jan. 23, 1809. He studied law, was admitted to the bar in 1829, practiced at Newport, New Hampshire, established the New Hampshire "Argus," and edited it for several years. From 1839 to 1845 he was a member of Congress. Appointed Commissioner of Patents, May 5, 1845 by President Polk, he served ably and faithfully in this office until May 9, 1849, after which he became for a brief period official editor for the "Union" in Washington, D. C., and later resumed the practice of law at Newport, New Hampshire, and Boston, Massachusetts.

04/16/18

Determining The “Article of Manufacture” Under 35 U.S.C. § 289

Perry Saidman, Elizabeth Ferrill, Damon, Neagle, and Tracy Durkin

For the first time in more than 100 years, on December 6, 2016, the Supreme Court decided a case involving a design patent. The case, Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429 (2016), involved the interpretation of 35 U.S.C. § 289, which says that an infringer is liable to the design patent owner to the extent of his total profit for sales of any article of manufacture to which the patented design has been applied. The Supreme Court decided that an article of manufacture under Section 289 may be the end product as sold by the infringer, or it may be a component of the end product. This decision left open the question of how to decide what the article of manufacture is in any given case, including the one at bar. Our article, being a collaborative effort among a small group of design patent specialists, proposes a test for determining the relevant article of manufacture in any given case, and also proposes considerations for determining the total profit once the relevant article of manufacture has been identified.

04/11/18

HENRY L. ELLSWORTH 1835-1845

When the Act of 1836 created the new office of Commissioner of Patents, the appointment of the then Superintendent of Patents, Henry L. Ellsworth, to the Commissionership proved both logical and wise. As Superintendent of Patents since his appointment in 1835, he had proved his ability by substituting order for chaos in the administration of a department which had never previously been conducted in a scientific and business-like manner. It is generally thought that the responsibility of initiating the policy under the new law, and new organization, was well placed.

04/09/18

Note: The Application of Big Data Analytics to Patent Litigation

Chloé Margulis 

This article defines the current gap between big data analytics and patent litigation. It discovers how big data analytics can be applied to the patent industry to create more effective risk analysis, an early warning system, and preventative strategies for inside and outside of the courtroom. Big data has the potential to modify current practices in the patent industry, namely those geared towards aiding patent examiners, attorneys, inventors, jurors, and judges. It also offers a solution to the threat that patent monetizers pose on smaller companies and inventors, who often lose time and money in these sometimes unavoidable lawsuits. This research examines the application of big data in the healthcare industry for real-time results and preventative measures. These actions set a good precedent for further diffusion into other industries, such as patent law. Features for future implementation and project development are presented as a roadmap to create a universal big data analytics system for the patent industry.

04/04/18

JAMES C. PICKETT 1835

James Chamberlayne Pickett was born in Fauquier County, Virginia, on February 6, 1793. His family moved to Kentucky when he was a young boy. He attended the best schools, including the U.S. Military Academy in West Point, New York. He served in the army during the War of 1812. 

Pickett practiced law in Kentucky and was editor of a newspaper. He married Ellen Desha, daughter of Kentucky’s governor. He was elected to the Kentucky legislature, after which he spent four years in South America as a U.S. diplomat. He was fluent in several languages and a prolific writer on scientific subjects and diplomatic history.

04/02/18

Fine China? A Look Into Chinese Intellectual Property Infringement, Treaty Obligations, And International Responses

Kevin Eugene Thomas Cunningham Jr.

China has garnered the reputation of being the world’s largest exporter of infringing good, as well as being a place where property rights are notoriously difficult to enforce. The international community has a vested interest in curbing infringing activity, however, it has proven difficult to get China to both create new domestic law allowing for increased protections, as well as enforcing those laws whenever they are eventually implemented. This paper conducts a brief survey of the Chinese historical underpinnings surrounding their current intellectual property law regime. It then goes on the examine many of the treaties to which China is a signatory, as well as the unique issues that China faces when attempting to enforce its domestic law and meet international obligations. Finally, I will analyze international responses to China’s lack of enforcement, followed by an analysis of what worked, what didn’t, and what can be done in the future to achieve the desired result of increased protection for intellectual property.

03/28/18

JOHN D. CRAIG 1829-1835

John D. Craig was born in Ireland in 1766. He was a teacher at the Baltimore Union School and the master at an academy in Baltimore. In 1828 he led the founding of the Ohio Mechanics Institute of Cincinnati, which became the College of Engineering and Applied Science of the University of Cincinnati.

After Secretary of State Martin Van Buren transferred Patent Office Superintendent Thomas Jones to another position in the State Department, he appointed Craig superintendent the next day, June 11, 1829.

03/26/18

Patent Eligibility of Online Application Software – Another View

Scott Anderson

In a recent article, Ping-Hsun Chen presented “Patent Eligibility of Online Application Software After Internet Patents Corp. v. Active Network, Inc.” in which he reached the following conclusion: “Internet Patents indicates that on-line application software may no longer be patent eligible.” This very gloomy conclusion overstates the facts somewhat, and a more accurate statement of the current state of affairs is in order.

03/21/18

THOMAS P. JONES 1828-1829

Thomas P. Jones was born in Herefordshire, England, in 1774. He immigrated to the United States after being trained as a physician and lived in Philadelphia as early as 1796.

He was a professor of natural philosophy and chemistry at the College of William and Mary and held other academic positions. He returned to Philadelphia in 1825 to become a professor at the Franklin Institute and the editor of its journal.

03/19/18

The Unintended Consequences of the Injunction Law after eBay v. MercExchange - An Empirical Study of the Effects on Injunctions in Patent Law

Christopher J. Clugston and Wonjoon Kim

Good intentions often have unintended consequences. This applies to recent changes in the injunction law in patent cases. Although these changes were intended to alleviate some of the problems caused by patent owners that do not practice their invention, the changes have also unintentionally made it more difficult for patent owners in certain industries to obtain injunctions.

An injunction in patent litigation is generally an order prohibiting the manufacture, use, sale, or importation of any device that embodies the patented technology. As authorized by the Patent Act, courts “may grant injunctions in accordance with the principles of equity.” Outside patent law, the “principles of equity” traditionally means that an injunction can be granted only if the plaintiff can show that the following four factors, in the aggregate, favored an injunction: (1) irreparable injury, (2) an inadequate remedy at law, (3) a balance of hardships between the parties, and (4) the public interest. However, different standards developed for injunctions in patent cases. In 1982, Congress created the US Court of Appeals for the Federal Circuit (the Federal Circuit), giving it jurisdiction over all patent law appeals. From its inception, this court has instead interpreted the phrase “principles of equity” to mean that injunctions should routinely be granted after a patent was found to be valid and infringed. A denial was appropriate only in “exceptional circumstances.” Indeed, one study found that, prior to 2006, injunctions were granted in over 95 percent of cases. The rationale for this nearly automatic grant of injunctions was that the right to exclude is “the essence” of a patent, and, without an injunction, the value of that right would be significantly diminished. However, because of the increasing number of patent plaintiffs that do not, themselves, practice their invention, many began to question the soundness of this general rule.

03/12/18

WILLIAM THORNTON 1802-1828

William Thornton, the first and longest serving head of the office, was born on May 20, 1759, in the British Virgin Islands. He was sent to England at the age of five for education. His many interests included architecture, painting, botany, and mechanics. He received a medical degree from the University of Aberdeen and practiced briefly as a physician. 

He travelled widely in Europe and met Benjamin Franklin in Paris. In 1785 he returned to the family sugar plantation on the island of Tortola. The next year he moved to Philadelphia, which was an early seat of the U.S. government, and became a U.S. citizen.

03/12/18

Content now available.

03/12/18

Rebutting Obviousness Rejections by way of Anti-Obviousness Case Law

Tom Brody

The most common strategies for rebutting obviousness rejections are to argue that the prior art fails to disclose all the claim elements and to argue that the examiner did not assert the proper rationale for combining references. An alternate strategy, or a strategy to use in addition, is to demonstrate that one or more relations exist between the primary reference and the secondary reference. These relations are: (1) Non-analogous art; (2) Rendering the prior art unsatisfactory for its intended purpose; (3) Proposed modification cannot change the principle of operation of a reference; (4) Redundant advantage; (5) Advantage provided by the secondary reference not needed by and not relevant to the primary reference; (6) Disparate references; (7) Context differs between cited references, and (8) Teaching away. This article names these relationships the anti-obviousness inquiry, because these relationships are applied only in rebuttal arguments and not in the examiner’s rejections. Rebuttal arguments making use of only the anti-obviousness inquiry (without any other type of argument) are sufficient to overcome obviousness rejections. The analysis herein only includes opinions from PTAB where the examiner’s asserted rationale was not weakened by being merely conclusory, and not weakened by the prior art not disclosing all the claim elements. An issue-spotting guide is provided for detecting conclusory rationales. The obviousness inquiry takes many, many forms with little in the way of a common property, and for this reason the author provides a unified concept of the obviousness inquiry using the family of resemblances concept of Wittgenstein.

03/06/18

Canadian Patent Agent Regulation Reform (Part 1) (In)Validity Issues Surrounding the Canadian Patent Agent Exam

Wissam Aoun

Only registered Canadian patent agents may represent others before the Canadian Patent Office. To qualify as a registered Canadian patent agent, candidates must complete an apprenticeship followed by successfully passing the Canadian patent agent examination. This article analyzes the validity of the current Canadian patent agent exam. The analysis includes a comprehensive review of the development of the current exam, as well as a review of candidate solution papers from the most recent exams. Furthermore, the analysis includes a comprehensive review of patent office licensing exams from comparable jurisdictions. The analysis concludes that the current Canadian patent agent exam is an invalid indicator of entry-level competence. Subsequent work will show that the validity issues surrounding the Canadian patent agent exam are symptomatic of a greater crisis of legitimacy plaguing the Canadian patent agent profession, highlighting the need for greater reform of the Canadian patent agent regulatory framework.

02/20/18

Two Stepping with Alice in Justice Stevens' Shadow

L. Rex Sears, Ph.D., J.D. 

Alice Corp. Pty. Ltd. v. CLS Bank International articulated a two-step procedure for determining patent eligibility: “[f]irst, we determine whether the claims at issue are directed to one of those patent-ineligible concepts”; if so then at “step two, we . . . examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to transform the [concept] Into a patent-eligible application.” Lower-court opinions issued after Alice are structured around and focused on that two-step analysis. But academic commentary has focused on Alice’s assumptions about and implications for “the boundary between an unpatentable principle and a patent-eligible invention,” almost to the exclusion of the two-step inquiry that preoccupies the courts. 

02/13/18

How to Write a Law Review Article

Sean Burke

It is traditional for outgoing Editors-in-Chief at the Journal to write a short note to our readers. While there is no overarching theme to these notes, my predecessors have often discussed their good times at the Journal and the friends they made along the way. This is not one of those essays. 

02/05/18

Patent Eligibility of Online Application Software After Internet Patents Corp. v. Active Network, Inc.

Ping-Hsun Chen

This article analyzes a Federal Circuit decision from 2015, Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015), holding that the claims for a method, computer system, or computer-readable storage medium, for providing an intelligent user interface to an online application were patent-ineligible. Internet Patents may indicate that the possibility of patenting online application software or programming is closed. Reciting a computer or software mechanism in a claim may not be helpful because the computer or mechanism elements may merely implement general functions of a computer, which cannot add any inventive concept into the claim.

01/24/18

Express Employee Patent Assignments: Staying True to Intellectual Property's Credo of Rewarding Innovation

Paul Spiel

Employees often assign away rights without knowing they are doing so, introducing what some have called ”cube-wrap” contracts. In ProCD, the 7th Circuit concluded that shrink-wrap agreements were valid, but the reasoning the court used is not well suited for employment-related patent assignments. Express employee patent assignments impermissibly overreach into an inventor’s past and future and could be deemed unconscionable. Rewarding innovation is ingrained in the U.S. Constitution and is a major justification for patent law itself, but express assignments remove this incentive. Public policy in tandem with unconscionability justifies a reworking of the ways in which employees expressly assign patentable inventions.

01/16/18

Errors, Incorporation by Reference, and the Abhorrent Doctrine of Disappearing Anticipation

Mark R. Buscher

The standard for anticipation of a patent claim is seemingly straight forward – a single prior art reference recites each and every element and limitation of the claim. “There must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention.” Yet some interesting wrinkles can occur.

01/08/18

Ethical Considerations in Intellectual Property Law

Leonard Raykinsteen

The U.S. legal system affords certain rights and provides protections for owners of property that result from “the fruits of mental labor,” or so-called “creations of the mind.”1 This kind of property is called intellectual property (IP). IP law, in turn, deals with the rights and protections for owners of IP. These rights and protections are based on federal patent, trademark and copyright laws and state trade secret laws. In general, patents protect inventions of tangible things; copyrights protect various forms of written and artistic expression; and trademarks protect a name or symbol that identifies the source of goods or services.

01/02/18

The Interplay Between User Innovation, the Patent System and Product Liability Laws: Policy Implications

Stijepko Tokic, J.D., LL.M.

Innovation is a heavily used buzzword in the United States of America, and the fixation with innovation has deep roots in American society. It was even suggested that “America is innovation.” The “innovate or die” mindset, famously articulated by Bill Gates in his Congressional testimony in 1998, has been mentioned in at least ten books going back to 1958. Over time, the popularity of the slogan “Innovate or Die” made the slogan itself a business, as it is now commercially sold as a poster.

One of the primary issues in innovation debates is the role of the patent system in promoting innovation. Recognizing the importance of stimulating innovation, the Framers of the Constitution authorized the United States Congress (Congress) “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The Patent Act of 1790 was the first act enacted by Congress, and the law gave inventors rights to their creations for the first time in American history. While the notion that intellectual property rights are designed to create incentives to innovate, and ultimately to promote innovation, has been repeatedly acknowledged by the Supreme Court of the United States (Supreme Court), many scholars continue to question that notion and argue that the patent system currently does the exact opposite: stifles innovation.

12/27/17

 

How an Old Non-Statutory Doctrine Got Worked into the § 101 Test for Patent Eligibility

Peter Hecker 

The 35 U.S.C. § 101 test for patentable subject matter laid out by the Supreme Court in Alice has been the subject of complaint by judges and patent practitioners because of its redundancy with the § 103 nonobviousness requirement. This redundancy seems to have come from a common root shared by Alice’s inventiveness requirement and § 103 obviousness. Particularly, § 103 obviousness descended from a mid-nineteenth century doctrine known as the skillful mechanic test, while Alice’s inventiveness requirement appears to have evolved from another old doctrine known as aggregation. Both the aggregation doctrine and the skillful mechanic test assessed whether a patent claim was inventive. In the mid twentieth-century, the Supreme Court clearly stated that the Patent Act of 1952 codified the skillful mechanic test in § 103 obviousness. It is less clear that Alice’s inventiveness requirement descends from the aggregation doctrine. However, the similarity between the two rules, their legal contexts, their purposes, and complaints about them, all suggest that Alice’s inventiveness requirement descended from the aggregation doctrine. If this is true, then the overlap between Alice’s inventiveness requirement and § 103 obviousness likely stems from the common root of inventiveness shared by the old skillful mechanic and aggregation doctrines. 

12/11/17

An Overview and Comparison of U.S. and Japanese Patent Litigation, Part II

Kyle Pietari

The forces of globalization and nations’ investments in their patent systems are making the enforcement of patent rights an increasingly international practice. Though the patent systems of Japan and the United States differ in many fundamental ways, both are key jurisdictions. The aim of this two-part article is to provide a thorough overview and comparison of the major aspects of patent litigation in the U.S. and Japan. It is written from a litigator’s perspective, to demystify the system of each nation for someone familiar with that of the other nation.

12/01/17

Bifurcation of Validity and Infringement Determinations

Janice Kwon and Mark Vallone

A large majority of jurisdictions have adopted a “unified” (or “combined”) patent litigation system, wherein the same court adjudicates the validity and infringement of a patent. For example, prior to the implementation of the America Invents Act (“AIA”), in the United States, the same court would adjudicate both an infringement claim and an invalidity defense thereto. However, a handful of other jurisdictions, such as Germany and China, have adopted a bifurcated system wherein one court supported by technical experts adjudicates patent validity and a separate court or agency adjudicates patent infringement. Infringement proceedings are quickly completed under the assumption that the patent is valid, and the judgment can be enforced before the validity of the patent is determined. Other countries, such as Belgium, Japan, and now the United States, are de facto or “optional” bifurcated systems—while the patent litigation system on its face is a “unified” system, wherein the same court adjudicating infringement can also review validity issues, patent infringement proceedings may be suspended until parallel validity proceedings in the Patent Office are completed.

11/15/17

Reconceptualizing Copyright Registration

Omri Alter

This Article considers the issue of copyright registration through the paradigm of behavioral economics. By considering the issue through a paradigm that has not been considered before, it results in a conclusion that stands face to face with copyright scholarship of recent years. This Article critiques the trend in the literature that advocates for strengthening the role of registration in copyright law. The Article does so by examining what is termed here as “registration dilemma,” which relates to the decision making done by authors to come to a conclusion regarding whether to register their work. The social benefits ascribed to the implementation of copyright registration by the conventional literature dealing with this issue are based on rational decision making of authors. Yet, this conventional model portrays only a limited picture. It does not account for a wide array of decisions that authors may take with regard to the registration dilemma, such as decisions that arise while considering behavioral models of decision making. Because the benefits of copyright registration rely on authors making rational decisions, the existence of decisions that are not based on these kinds of considerations imply that the intended goals will not be achieved. Hence, this Article proposes to downplay the role of registration and search for other means to achieve the same policy goals, without relying on authors’ decision making.

11/01/17

Holmes on Patents: Or How I Learned to Stop Worrying and Love Patent Law 

Amelia Smith Rinehart

The writings and opinions of Oliver Wendell Holmes, Jr., have inspired generations of legal scholars to explain topics like pragmatic skepticism, legal positivism, legal realism, legal moralism, and other “legal-isms.” Justice Holmes—celebrated and contemptible, beloved and beleaguered, emphatically entrenched in the common law—stumbled into federal patent cases on the Supreme Court, yet there is little scholarship stemming from his few opinions in this area. As the twenty-first century ushers in a new gilded age, replete with important battles over patent law and policy as a mechanism for promoting innovation, Holmes’ unique outlook on public and private law (and patents) at the turn of the twentieth century may offer a new perspective within contemporary debates about patent law and its limitations.

10/26/17

Uber & Alice: Could One Patent Really Take Down This Ridesharing Giant?

Douglas B. Wentzel

General Motors’ recent acquisition of ridesharing company Sidecar, licensing of its intellectual property, and half a billion dollar investment in Lyft each suggest that Uber’s likelihood of being sued for patent infringement is on the rise. General Motors now has the rights to assert U.S. Patent 6,356,838—“System and method for determining an efficient transportation route.” Uber’s infringement liability ultimately depends on the validity of this patent, which includes claims to computer-implemented methods and systems for procuring on-demand automobile-based transportation services. U.S. Patent 6,356,838 includes at least one means-plus function claim, and its claims as a whole implicate the Mayo/Alice twostep framework due to their computer implementation, making it an interesting specimen for analysis. This Article finds that Claims 12 and 18 of U.S. Patent 6,356,838 are patent-eligible under 35 U.S.C. § 101 and that Uber infringes each of these claims. The analysis performed and discussed herein evidences a patent-eligibility framework that generates uncertainty for patentees, creates instability in the relevant computer-implemented technology markets, and reduces the value of United States intellectual property. Ultimately, something must be done to address uncertainty and instability inherent in the Mayo/Alice framework if the United States intellectual property is to retain its status as the most valuable global currency.

10/20/17

Technology Unions: How Technology Employees Can Advocate For Internet Freedom, Privacy, Intellectual Property Reform, and the Greater Good

Martin Skladany

The acute demand for programming, engineering, and scientific talent has put highly skilled and talented workers at Internet and technology behemoths-e.g., the Apples, Facebooks, and Googles of the world-in a unique position to promote change within their companies that would improve society. Such employees should band together to form technology unions in order to advocate for more responsible and enlightened policies by their employers on issues such as privacy, Internet freedom, and the commons and to encourage their employers to challenge competitors and governments that violate such policies. Given that external actors such as civil society and government have been ineffective in pressuring technology giants towards reform, it is time to generate pressure internally.

08/29/17

Are Means-Plus-Function Claims Reasonably Certain to Require Tables of Support?

David Orange

The most likely victims of the Supreme Court’s Nautilus v. Biosig decision appear unaware of their fate. When the Court explained that patent claims must be more than merely “amenable to construction,” but rather must provide “reasonable certainty” in order to meet the requirements of the second section of 35 U.S.C. §112, it is actually claims invoking the sixth section of this statute, better known as means-plus-function claims, that could be invalidated first. Means-plus-function claims are at risk for exactly the reasons that attorneys include them: there is flexibility in matching the claim element to examples from the patent. The flexibility of means-plus-function claims is now on a collision course with the new reasonable certainty standard. Patent drafters seeking the protection of old means-plus-function standards may be creating the very “zone of uncertainty” that Nautilus prohibits. Without new case law, practitioners may not understand how to draft valid means-plus-function claims going forward. This paper considers both legal and practical considerations to forecast how the Patent Trial and Appeal Board will guide applicants.

08/23/17

Patentee's Monetary Recovery From An Infringer - A Revisit

Richard L. Stroup, Cecilia Sanabria, Kelly C. Lu, & Daniel G. Chung

In 1977, the original article was published in this Journal, authored by a younger version of one of the authors, at the start of his legal career. Since then, much has changed. The Federal Circuit was created and given exclusive jurisdiction over patent appeals. The Supreme Court, the Federal Circuit, the district courts, and the U.S. Claims Court have published additional precedent, refining the law and its application. Congress has made a few changes to the law, although the majority of controlling statutes and types of available awards remain much the same. Yet, since 1977 the interpretation and application of the law has shifted in many ways.

08/15/17

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. 

08/14/17
“This is a new role created within the Intellectual Property team here at Gilead Sciences, reporting into the Vice president of Intellectual Property and will support an international department of about 20 Attorneys. This is an opportunity to develop and manage a high performing team to review best practices and implement processes to improve operational excellence to support significant volume and highly impactful work. This team is made up of high caliber, reputable and extremely hard working IP professionals and they are integral to the companies’ ability to continue providing therapies to medical areas of unmet needs worldwide.”
08/05/17

''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.

07/25/17

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.

07/12/17

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.

06/20/17

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. 

06/09/17

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

05/31/17

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.
05/24/17

Written By: Roland Casillas
     Web and Blog Editor

Patent No. 3,375,836A

Folding and Automobile-Transportable Camping Tent

Inventors: Lara Domeneghetti

05/15/17

The Patent Attorney in Popular Culture 

Robert M. Jarvis

Popular culture is filled with lawyers. Prosecutors and defenders are the most commonly seen, with civil litigators following closely behind. Patent attorneys, on the other hand, almost never appear. Still, with enough digging, such characters can be located. Discussed below are the ones I have been able to find. (See article for footnotes).

04/17/17

Evolution of Music Players

Written By: Roland Casillas
      Web and Blog Editor

With Coachella Valley Music and Arts Festival currently taking place, I thought it would be interesting to look into our past and see what portable music devices were used. Here is a brief history of our portable music devices.

First, starting with the Transistor Radios, U.S. Pat. No. 2,892,931, Richard Koch designed a miniature sized transistor radio that could fit inside an ordinary shirt pocket. To make this device commercially acceptable, he had to come up with an acceptable battery life, meaning create circuitry to consume minimal voltage so as to power the device for longer period of time.

Second, the Portable Lightweight Record Player, U.S. Pat. No. 3,218,081, Augusto Gentilini designed a portable record player that would fit inside of a small suitcase. The reason for a reduction in size was because of the altered motor arrangement. This arrangement also limited the vibration caused by the motor due to the connection with a suspended rubber plate and offsetting the weight of the motor by adding an adjustable weight. 

04/03/17

Patents in Outer Space: An Approach to the Legal Framework of Future Inventions

Juan Felipe Jiménez

Space is a challenge for patent law. From the first Apollo moon mission, to the astronauts on board today’s International Space Station, man has used technology in outer space. But what happens if the technology used on these missions is patented on Earth? Because patent rights are territorial, use of patented technology in outer space is presumptively non-infringing, and accordingly requires no license. As increasingly frequently private commercial actors are exploring space, this lack of patent enforcement has the capacity to distort incentives to invent technology that is primarily designed for use outside the Earth’s boundaries. While some countries have tried to solve this problem by applying their domestic patent law extra-territorially, an international solution is required.

03/14/17

From Camera Obscura To Camera Futura - How Patents Shaped Two Centuries of Photographic Innovation and Competition

Elliot Brown, Ben Hattenbach, and Ian Washburn

The development of photographic technology has been one of the defining achievements of the last several centuries. About a thousand years ago, the state of the art approach to recording imagery involved what was called a ”camera obscura.” This device was a large box or even a full room with a hole in one side, which was used to project an upside-down image of its surroundings on a screen, enabling one to trace the image onto paper. Less than two hundred years ago, the cutting-edge technology for imaging was the daguerreotype, an expensive and unwieldy process through which a delicate image could be etched onto silver-coated copper plates that had been sensitized in iodine vapor. Today, in contrast, the Internet provides ready access to gigapixel imagery captured by space telescopes of galaxies billions of light years away. Even run of-the-mill consumer equipment offers image-stabilized autofocus lenses and image sensors whose tens of millions of pixels can capture details in near darkness.

02/21/17

Written By: Roland Casillas
              Web and Blog Editor

Patent No. 4,166,462 A

Self-propelled Shark-proof Cage

Inventors: James M. Ellis

02/13/17

Written By: Roland Casillas
      Web and Blog Editor

Patent No. 1,809,593 A

Folding Ornament of Expansible Tissue

Inventors: Henry E. Luhrs

Assignee: Beistle Company

02/08/17

The Failure to Preserve CRISPR-Cas9’s Patentability post Myriad and Alice

Benjamin C. Tuttle

The CRISPR-Cas9 system is a highly versatile genome-editing technology that is derived from bacteria. Heralded as one of the most influential biotechnology discoveries in history, CRISPR-Cas9 is unlike any previous geneediting technology because it utilizes a simple RNA template and a relatively small universal enzyme to accurately, efficiently, and cheaply make genetic modifications in any organism. Developed independently by two leading research groups out of the University of California, Berkeley (“Berkeley”) and the Massachusetts Institute of Technology (“MIT”), the ownership of CRISPR-Cas9 technology has lead to a patent dispute, culminating in the recent allowance of an “interference proceeding” by the United States Patent and Trademark Office (“USPTO”). The USPTO’s pending decision on this interference proceeding leaves uncertain the propriety of a technology projected to be worth billions. 

01/23/17

Curiouser and Curiouser! Why the Federal Circuit Can’t Make Sense of Alice
Austin Steelman

In 2010, the Supreme Court broke nearly its nearly three-decade silence on patentable subject matter under 35 U.S.C. §101 in Bilski v. Kappos. The Court rejected the Federal Circuit’s machine-or-transformation test but declined to “define further what constitutes a patentable ‘process”’. Without a new test, the Federal Circuit’s post-Bilski decisions presented inconsistent interpretations of §101, especially for software patents. So in June 2014, the Supreme Court once again sought to bring clarity to the questions surrounding the abstract idea exception in Alice Corp. v. CLS Bank.

01/18/17

Written By: Roland Casillas
      Web and Blog Editor

Patent No. 6,568,120 B2

Ice Fishing Trap

Inventors: Kasmir Smolinski 

01/10/17

Two Years After Alice v. CLS Bank 

Jasper L. Tran

As of June 19, 2016, courts have examined 568 challenged patents brought under § 101 motions citing Alice, resulting in 190 valid patents and 378 patents invalidated with an average invalidation rate of 66.5%. Specifically, the Federal Circuit upheld 3 patents and invalidated 34 patents—an average invalidation rate of 91.9%. Also, courts have decided a total of 500 motions brought under § 101 citing Alice, resulting in 109 validation holdings and 391 invalidation holdings with an average invalidation rate of 78.2%. Specifically, the Federal Circuit has decided 26 motions, resulting in 2 validation holdings and 24 invalidation holdings with an average invalidation rate of 92.3%. The district courts have decided 251 motions, resulting in 84 validation holdings and 167 invalidation holdings with an average invalidation rate of 66.5%. The PTAB has decided 209 motions, resulting in 23 validation holdings and 186 invalidation holdings with an average invalidation rate of 89.7%.

12/14/16

The Bedeviling Mess of ePlus, Contempt, and Article III

Wayne A. Kalkwarf and Matthew D. Tanner

ePlus, Inc. v. Lawson Software, Inc.1 concerns the cancellation of patent claims. Although a judicial decision cancelling a patent claim would not necessarily warrant significant scrutiny, ePlus addresses an issue beyond the scope of routine patent jurisprudence. The decision involves a basic constitutional power of the judicial branch.

11/23/16

Written By: Roland Casillas
              Web and Blog Editor

Patent No. U.S. 8,375,847 B1

Winch for Turkey Deep Fryers

Inventors: William P. Anganes

11/21/16

Review: The Criminal Law Of Intellectual Property and Information: Cases and Materials, 2nd Edition

Asha Puttaiah

The Criminal Law of Intellectual Property and Information: Cases and Materials, 2nd Edition by Geraldine Moohr, Jacqueline Lipton, and Irina Manta (2015, West Academic.)

A law enforcement officer buys original copyrighted movies for his video rental shop. In order to prevent damage to his newly acquired video property, he produces one copy of each original movie and rents the copy while keeping the originals in a safe place. Has he violated the copyright owner’s federally recognized property right with his self-created ‘insurance’ program? Is it a criminal violation? Is a civil infringement? Does his distribution business implicate the Commerce Clause because it entails interstate commerce? If yes, does this invoke a federal criminal statute? Or is it merely a localized property right infringement? Is it merely bad or good business practice? Does property right infringement constitute theft? Does the law enforcement officer’s role as a business owner affect what he is authorized to do with the copyrighted video in comparison to what he is authorized to do as a private citizen? As a law enforcement officer, should he have known better? One last question – Is your head spinning yet?

11/17/16

Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 8,549,699 B1

Illuminated Leaf Blower

Inventors: Francisco A. Domingo

11/15/16

Michael B. Pierorazio

In re: Lawrence Everatt Anderson,

http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1156.Opinion.10-11-2016.1.PDF

The Federal Circuit holds that “the speed being displayed on the display for use by a motorist in determining a route of travel” is a non-limiting statement of intended use because the “‘for use’ language does not add a structural limitation to the claimed system or method.”
11/09/16

Written By: Roland Casillas
      Web and Blog Editor

Patent No. US 4,189,904 A

Leaf Mulcher Attachment for Lawn Mowers

Inventors: Alexander D. Parker

11/08/16

In Support of Trademark Trial and Appeal Board Rulemaking: Replacing the Two-Month Time Period With A Sixty-Three Day Time Period

Alexander Sofocleous

When an appellant is dissatisfied with a decision by the Patent Trial and Appeal Board (“PTAB”) or Trademark Trial and Appeal Board (“TTAB”), the appellant may seek judicial review. Generally, in ex parte patent prosecution or prosecution of an application to register a mark, a dissatisfied appellant may request reopening of prosecution or seek judicial review of a PTAB or TTAB decision affirming or affirming-in-part an examiner’s action. Such PTAB or TTAB decisions occur frequently. Properly calculating the time period for seeking judicial review is critical because being late has consequences.

11/02/16

Written By: Roland Casillas
      Web and Blog Editor

Patent No. 5,058,370 A

Yard Rake with Pick-Up Head

Inventors: Elise M. K. Russell

10/24/16

Written By: Roland Casillas
      Web and Blog Editor

Patent No. 7,878,878 B2

Life Size Halloween Novelty Item

Inventors: Darren S. Massaro 

10/11/16

Written By: Roland Casillas

        Web and Blog Editor

Patent No. U.S. 6,311,631 B1

Jet-Propelled Water Board

Inventors: Ronald L. Beecher

Assignee: Ronald L. Beecher

10/04/16

Intellectual Property Registries in Judea and Samaria and the Gaza Strip

Chagai Vinizky

Intellectual property laws are essentially territorial. Because the State of Israel did not impose its sovereignty on Judea and Samaria,1 in principle Israeli laws did and do not apply to the region. Thus, the registration of intellectual property rights with the five intellectual property registries in Israel (patents, design patents, trademarks, appellations of origin, and plant varieties) in principle provide protection only within the territory of the State of Israel and not in Judea and Samaria. A historical perspective of intellectual property registries in Judea and Samaria and the Gaza Strip requires the review of four periods: Ottoman, British Mandate, Jordanian/Egyptian, and the period of the Israeli military government. The latter is divided into two sub-periods: from 1967 to the Interim Agreement in 1995,2 and from 1995 to the present. The discussion of trademarks began during the Ottoman period and it is still relevant today, because the lifespan of a trademark is not limited in time as long as it is renewed. The discussion of patents and design patents (henceforth, designs), from the Ottoman period to the Interim Agreement does not concern patents and designs that are valid today, because patents and designs expire at the end of their period, but the substantive law applicable to the registration of patents and designs, and the process that takes place in relation to the registration in intellectual property registers when there is a change of government or a transfer of territory. The discussion is important for the solutions that we present in this article. This article describes the development of intellectual property rights registration in Judea and Samaria and the Gaza Strip, stressing the existing flaws in the current law, and proposes solutions to remedy these flaws.

09/07/16

Garcia v. Google, Inc. and the Limited Rights of Motion Picture Actors Under American Copyright Law

Jessica Watkins

The 9th Circuit’s Garcia v. Google decision accomplished little more than maintaining the status quo, further entrenching the notion that motion picture actors cannot claim copyright ownership in their individual performances. However, the virulent way in which Cindy Garcia’s performance in Innocence of Muslims was twisted and broadcast to the world begs the question of whether this aspect of copyright law should be revisited. The moral rights laws in other countries take into account the intimately personal nature of artistic expression, and recognize that creative expression is an extension of personhood. Furthermore, there are many aspects of modern technology that necessitate a fresh look at copyright ownership, characteristics that could not have even been fathomed when the Copyright Act was signed into law. Where Garcia has been less than helpful in its particular facts, it is useful as a starting point for refreshed attitudes about the potential for actors’ ownership of copyright in their performances. This article offers guidance for the next generation of copyright reform, pointing to foreign copyright regimes, privacy laws, and necessary alterations to the Copyright Act as a comprehensive starting point from which discussion and new legislation can evolve. What will hopefully follow is more predictability and security for motion picture actors whose performances are deserving of copyright protection.

08/22/16

Trade Dress: An Unsuitable Fit for Product Design in the Fashion Industry

Shayna Ann Giles

Fashion design is an uneasy fit for intellectual property law. Because trade dress is not clearly defined in the Lanham Act, the courts were able to expand this area of intellectual property to protect product design in the fashion industry. Congress does not concur with this expansion, as demonstrated by the lack of legislative action in the face of multiple opportunities to grant protection to fashion design. Despite Congressional intent, the courts attempted to fit fashion design into various types of intellectual property law, beginning with copyright and patent. After realizing that neither of those were an appropriate fit for fashion design, the courts settled on trademark law and more specifically trade dress.

08/10/16

The Problem of Mop Heads in the Era of Apps: Toward More Rigorous Standards of Value Apportionment in Contemporary Patent Law

David Franklyn & Adam Kuhn

In 1884, the U.S. Supreme Court rejected a damage claim on a patented mop head improvement for failure to apportion profits attributable to the patented feature against the entire mop. 130 years later, jurists deal with the same core challenge of damage apportionment except with much more complicated products. Given the fact that as many as 250,000 patents impact the average consumer smart phone, can anyone say confidently that any single one of these patents drives consumer demand for the whole product or even for any particular feature of the product? And if not, how much worth does any one patent have in relation to the value of the entire product? For example, what portion of the sales price of an iPhone is attributable to a particular individual feature of that phone, such as the ability to use FaceTime?

07/20/16

Joinder of Unrelated Infringers as Defendants in Patent Litigation Under the Jurisprudence of the United States District Court for the Eastern District of Texas - A Critical Review

Ping-Hsun Chen

In 2011, the Leahy-Smith America Invents Act (“AIA”) was enacted. 35 U.S.C. § 299 was created to limit district court’s power to permit joinder of unrelated infringers as defendants in a single lawsuit. Before that, district courts apply Rule 20 of the Federal Civil Procedure. The Eastern District of Texas had permitted joinder only because the same patent was infringed.

07/13/16

\

Stays Pending Inter Parties Review: Not in the Eastern District of Texas

Douglas B. Wentzel

Grant rates for stays of patent litigation pending the outcome of IPRs are now falling despite initially being very high. Use of IPRs is increasing, as is the likelihood that defendants will seek to stay litigation pending the resolution of these proceedings. Defendants should recognize that obtaining a stay pending IPR outcome is particularly challenging in the most popular patent litigation venue, the Eastern District of Texas.

Recent scholarship analyzes the general success rates of motions to stay pending IPR, but has yet to consider in depth the differential treatment of motions to stay pending IPR nationwide versus solely in the Eastern District of Texas, or treatment of these motions to stay in NPE-filed patent litigation. Treatment of stays pending IPR in exclusively NPE-filed cases in the Eastern District of Texas is significant because NPE-filed cases constitute more than two-thirds of all infringement cases filed in 2015 and NPEs filed almost half of all 2015 patent cases in the Eastern District of Texas.

06/28/16

Written By: John Kirkpatrick

Indacon sued Facebook for infringing U.S. Patent No. 6,834,276 (hereinafter the “’276 patent”), directed to “searching, indexing, perusing, and manipulating files in a database … through the insertion of automatically generated hyperlinks.”  Indacon at *2.  Appealing a finding of noninfringement by the district court, Indacon disputed the construction of the claim terms “alias,” “custom link,” “custom linking relationship,” and “link term.”  As no extrinsic evidence was introduced, the Federal Circuit reviewed, de novo, the specification and the prosecution history to determine the correct construction.

06/21/16
Retired Patent Attorney, 30 years experience, accepting overflow work in electrical and mechanical fields. robertplattbell@gmail.com Ph. (703) 544-5281
06/14/16

Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 5,527,039 A

Golf Swing Training Aid

Inventors: Claude A. Levesque

06/07/16

Written By: David Youngkin

In In Re: Gregory E. Urbanski, Kevin W. Lang the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (Board) finding the claims of the application obvious.  Urbanski’s application at issue was U.S. 11/170,614, entitled “Protein and Fiber Hydrolysates”, and was directed to a method of enzymatic hydrolysis of soy fiber.  Relevant to the appeal was claim 43 which required “that the soy fiber and enzyme be mixed in water for 60 to 120 minutes”.

05/26/16

Written By: John Kirkpatrick

Redline instituted an inter partes review (IPR) to show that claims 9 and 10 of U.S. Patent No. 6,526,808 (the ’808 patent), owned by Star, would have been obvious.  Redline did not include expert testimony to support its grounds in its IPR petition.  Upon institution of the IPR on two of the twelve grounds proposed in Redline’s petition, Redline submitted a motion for supplemental disclosure including expert testimony pursuant to 37 C.F.R. § 42.123(a), which allows for supplemental information “relevant to a claim for which the trial has been instituted” to be submitted “with-in one month of the date the trial is instituted.”  The USPTO PTAB denied Redline’s motion finding that the supplemental information could have been submitted with Redline’s petition and did not comply with the PTAB’s “statutory mandate for economy, integrity, efficient administration, and timely consideration of IPRs.”  Redline at *14.  The PTAB then rejected the grounds, noting that Redline “did not rely on an expert declaration in support of its position.” Id. at *12.  While Redline admitted that it intentionally delayed filing the expert information because submitting information for two grounds is less of a burden than submitting information for twelve grounds, Redline, on appeal, argued that the PTAB must allow the motion as long as the timeliness and relevance requirements of §42.123(a) are met.

05/02/16

Written By: Roland Casillas
              Web and Blog Editor

Patent No. U.S. 5,742,942 A

Golf Glove having Club-Gripping Strap

Inventors: Philip K. Sykes

04/19/16

 

Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 3,532,344 A

Golf club and glove including coacting non-slip elements and grip positioning means

Inventors: Benjamin Masstab

04/11/16

Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 2,258,999 A

Golf Player’s Glove

Inventors: Edward S Nunn
04/06/16

Written By: John Kirkpatrick

Wi-LAN sued Apple alleging infringement of U.S. Patent No. RE37,802 (the ’802 patent) concerning a wireless data communication technique.  The jury found no infringement and that the infringing claims were invalid as anticipated by prior art that disclosed a randomizer using real multipliers.  The district court denied Wi-LAN’s motion for judgment as a matter of law and for a new trial regarding infringement, but overruled the jury’s verdict regarding invalidity by ruling that the ’802 patent required complex multipliers.  Wi-LAN appealed the denial of JMOL and its motion for a new trial.  Apple appealed the district court’s ruling of validity.

03/22/16

Written By: David Youngkin

In Rosebud LMS Inc. V. Adobe Systems Incorporated the Federal Circuit affirmed the district court’s grant of summary judgement finding that Adobe Systems was not liable for pre-issuance damages because it had no actual notice of the application which issued as U.S. Patent No. 8,578,280.

03/09/16

Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 8,046,937 B2

Automatic Lacing System

Inventors: Tiffany A. Beers, Michael R. Friton, Tinker L. Hatfield

Assignee: Nike, Inc.
03/08/16

Written By: John Kirkpatrick

Appellant Ethicon asserts that the America Invents Act (AIA) and due process preclude the same panel of the Patent Trial and Appeals Board that instituted inter partes review of patented claims from making a final decision regarding the validity of the patented claims.  In addition, Ethicon argues that the disputed claims are valid because the commercial success of Appellee’s allegedly infringing invention is a “strong secondary indication of non-obviousness.”  Ethicon Endo-Surgery at *19.  The Court (DYK, Taranto) holds that “that neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination” and finds no error in the Board’s obviousness determination.   Id. at *2-3.  The Dissent (Newman) argues that the AIA requires bifurcation of the process because the AIA requires the Director to make the institution decision and the Board to issue the final decision.

02/23/16

Written By: Justin Blaufeld

 

The Federal Circuit holds that a restriction requirement that fails to classify a few dependent claims is nevertheless sufficient to stop the clock under the Patent Term Guarantee Act.

 

A patent has a term of 20 years from its effective filing date.  Since undue delays at the PTO can often burn through a patent’s term, the Patent Term Guarantee Act (35 U.S.C. § 154(b)) provides for the restoration of patent term when the PTO misses certain deadlines.  Applicants may petition the Director to restore any days in excess of these deadlines after a patent application is deemed allowable.

02/16/16

In honor of one of the great United State Supreme Court Justices passing over the weekend, Justice Scalia said this in a past interview with Piers Morgan.

Justice Scalia: “My hardest [decision ever made]?  It's the dullest case imaginable. They -- there is -- there is no necessary correlation between the difficulty of a decision and its importance. Some of the most insignificant cases have been the hardest. It would probably be a patent caseYou want me to describe it really?
Piers Morgan: No, I don't. (LAUGHTER)
Justice Scalia: No. Of course. (LAUGHTER)
02/09/16

Written By: David Youngkin

Recently the Federal Circuit in Lumen View Technology LLC v. Findthebest.com, Inc. upheld the district courts finding of exceptionality.  However, the Federal Circuit found it was improper to double the awarded attorney fees. 

Lumen View is the exclusive license of U.S. Patent 8,069,073 (“the ‘073 patent”), which is directed to methods of facilitating bilateral and multilateral decision making.  Findthebest.com (“FTB”) operated a website that provided personalized product and service recommendations based on user inputted information.  Lumen View filed suit alleging that FTB infringed the claims of the ‘073 patent.
01/12/16

Written by: Justin Blaufeld

Belden and Berk-Tek compete in making and selling telecommunications cable and cabling systems. In 2012, Berk-Tek's predecessor (Nexans, Inc.) petitioned for inter partes review of Belden's U.S. Patent No. 6,074,503, which claims a method for making a communications cable.    
01/08/16

Written By: Roland Casillas, Web and Blog Editor

Patent No. U.S. 9,126,487 B2 

Hoverboard which Generates Magnetic lift to Carry a Person

Inventors: D. Gregory Henderson, Shauna Moran, Mitchell Dougherty, Victor Espinoza, Robert William Melvin, James Janicki, David P Olynick

Assignee: Arx Pax, LLC 

01/06/16

Written By: John Kirkpatrick

Appellant Inphi asserts that U.S. Patent No. 7,532,537 (’537 patent) is invalid because the negative claim limitation “and the chip selects of the first and second number of chip selects are DDR chip selects that are not CAS, RAS, or bank address signals” does not meet the written description requirement of 35 U.S.C. § 112, paragraph 1.  Specifically, Inphi argues that specification fails to provide a reason to exclude the negative limitation.  Santorus, Inc. v. Par Pham., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).  The Court (O’MALLEY, Reyna, Chen) found substantial evidence to affirm the Patent Trial and Appeal Board’s (the Board) determination that the negative claim limitation is supported under §112, paragraph 1.     

12/14/15

Written by: Roland Casillas, Web and Blog Editor

Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., No. 14-1789 (Fed. Cir. 2015)

Appellant, Jack Wolfskin applied to the Patent and Trademark Office for a design mark consisting of an angled paw print for the use with its products, clothing, footwear, and accessories. Appellee, New Millennium Sports filed a response to oppose the application as it would likely create confusion with its own registered mark. In response, Jack Wolfskin filed a counterclaim for cancellation of New Millennium’s mark since they have abandoned said mark. The Patent Trial and Appeals Board found for New Millennium Sports, stating there was no abandonment of the mark. The Federal Circuit Court of Appeals agrees with the Board and New Millennium in finding no abandonment has taken place.                            

12/03/15
Meticulous German-to-English translations since 1989. Patents, briefs and expert opinions, court decisions. Competitive rates. G. Leonard, 630-235-9810, gleonard@allwordsgerman.com.
11/17/15

Written By: John Kirkpatrick

Appellant Achates argues that the Patent Trial and Appeal Board erred when the Board instituted an inter partes review (IPR) of Achates’ patents because Appellee Apple’s petitions for the review were time-barred under 35 U.S.C. § 315(b).  The Federal Circuit (Prost, Lourie, and LINN) concludes that it lacks jurisdiction to hear Achates’ appeal because “the Board’s determinations to institute IPRs are final and non-appealable under 35 U.S.C. § 314(d).”

11/13/15

Written By: Roland Casillas, Web and Blog Editor

Patent No. U.S. 9,170,707 B1

Method and System for Generating a Smart Time-Lapse Video Clip

Inventors: Jason N. Laska, San Francisco, CA (US); Greg R. Nelson, San Bruno, CA (US); Greg Duffy, San Francisco, CA (US); Hiro Mitsuji, San Francisco, CA (US); Lawrence W. Neal, Oakland, CA (US); and Cameron Hill, San Francisco, CA (US)

Assignee: Google Inc.

11/10/15

Written By: David Youngkin

Spectrum appealed the district court’s holding that U.S. Patent 6,500,829 (“the ‘829 patent’”) was invalid as obvious and that claims were not infringed by Sandoz’s Abbreviated New Drug Application (“ANDA”).  The Federal Circuit affirmed the district court’s holding that a substantially pure compound would have been obvious over both the 50/50 mixture and pure isomer.  Additionally the Federal Circuit affirmed the district court’s decision that held Spectrum could not rely on the doctrine of equivalents because of prosecution history estopple.
10/30/15

Written By: Roland Casillas, Web and Blog Editor

Patent No. U.S. 9,170,645 B2

Publication No. U.S. 2012/0293406 A1

Method and Apparatus for Processing Input in Mobile Terminal

Inventors: Hyung-Kil Park, Gyeonggi-do (KR); and Min-Hwan Seo, Gyeonggi-do (KR)

Assignee: Samsung Electronics, Co., Ltd.
10/26/15

Written By: David Youngkin

The phone wars between Apple and Samsung continue, with Apple seeking a permanent injunction barring Samsung from implementing selected features on Samsung products.   Recently, Apple appealed the district court’s denial of its request for a permanent injunction. In Apple Inc., v. Samsung Electronics Co., Ltd., a divided panel for the Federal Circuit (Judge Moore, concurring Judge Reyna, and dissenting Chief Judge Prost) found that the lower court erred in its denial, vacated the decision, and remanded the case back to the lower court.
10/09/15
Penn State Law is seeking an experienced legal professional to plan, oversee and implement all functions and activities of its new Intellectual Property (IP) Law Clinic. The clinic is designed to provide Penn State Law students with significant IP law experience and to provide the Penn State and local community support in protecting its intellectual property. The clinic is offered in direct support of the University’s Invent Penn State initiative (http://www.psu.edu/invent-penn-state) and Penn State President Eric Barron’s commitment to “promoting patents, licensing and start-ups” as part of Penn State’s effort to expand its already significant role in Pennsylvania’s economic development and create career opportunities for Penn State graduates (http://news.psu.edu/story/326830/2014/09/19/administration/president-emphasizes-economic-development-and-student-career).
10/06/15

IP Alert: Federal Circuit Upholds Expert Apportionment Methodology to Prove Reasonable Royalty Damages for Individual Features of Complex Technology

--Written by Fitch Even attorneys Steven C. Schroer and Christian C. Damon

On September 21, 2015, in Summit 6, LLC v. Samsung Electronics Company, Ltd., the Court of Appeals for the Federal Circuit added a new chapter to rapidly developing jurisprudence addressing the kinds of evidence admissible to prove the reasonable royalty value of patents drawn to individual features of a multi-element technology. Explaining its holding by reference to long-established Georgia-Pacific principles, the court upheld a jury verdict awarding a royalty based on opinions of a damages expert whose methodology rested on the premise that a “feature’s use is proportional to its value” and allocating infringing versus non-infringing use of the multi-element technology. The court affirmed the admission into evidence of the expert’s opinions based on usage surveys conducted by the infringer in the ordinary course of its business. In doing so, the Federal Circuit liberalized the admission of expert testimony that relies “on a methodology not previously used or published in peer-reviewed journals.” The court held that such opinions do not per se run afoul of guidelines established in Daubert v. Merrell Dow Pharmaceuticals. Finally, the Federal Circuit determined that based on the particular facts present and the manner the issue was presented at trial, a jury’s lump-sum damages award could compensate the patent owner for past and future damages and that a going-forward royalty was unnecessary.
10/01/15

Coming soon. If anyone has come across an interesting or innovative issued patent, new or old, and would like the IP community to know about it, please contact the Web and Blog Editor.

09/30/15

Written by: Justin Blaufeld

The Federal Circuit holds that in order to rely on the provisional filing date of a prior art patent under 35 U.S.C. § 102(e), one must prove that the prior art patent is actually entitled to the benefit of priority, in addition to showing that the provisional application anticipates the patent being challenged.

09/29/15

Written By: David Youngkin

Staub Design, LLC, v. David John Carnivale (Fed. Cir. 2015)

Mr. Carnivale owned the registered trademark “THE AFFORDABLE HOUSE” and registered domain name www.affordablehouse.com in 1998.  Mr. Staub, in 2004, registered the domain name “www.theaffordablehouse.com”.  The question for the court was not of trademark infringement, but of validity. Also, questions of collateral estoppel and issue preclusion were included in further proceedings by the courts.
09/22/15

Category: Claim Construction 

Written By: Michael B. Pierorazio

Rotatable Technologies LLC owns Patent No. 6,326,978 for a selectively rotating window on a computer display having a frame and display portion. The issue before the Patent and Trademark Appeals Board was whether some limitations recited in the claims, “computer display window”, “display portion”, “toggling the window between two preselected orientations”, were properly defined within the Specification. The question now before the United States Court of Appeals for the Federal Circuit is whether or not to stand behind the Patent and Trademark Appeals Board’s decision.

09/17/15

Category: Licensing 

Written By: Justin Blaufeld

In  Brulotte v. Thys Co., 379 U.S. 29 (1964), the Supreme Court held that a patent holder cannot charge royalties for the use of his invention after its patent term has expired.  Over time, some have come to criticize this rule as an undue restraint on the right to contract.  For example, a patent holder may want to cover a portfolio of patents with one contract, or structure a royalty deal to provide for larger payments in the future in exchange for smaller payments today. The Supreme Court revisits Brulotte to decide whether or not the rulings of the past still hold true today.

04/15/15
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleKennametal, Inc. v. Ingersoll Cutting Tool Co., No. 2014-1350 (Fed. Cir. March 25, 2015).
Issues
[Anticipation] Because all the limitations of Kennametal’s claim are specifically disclosed in Grab, the question for the purposes of anticipation is “whether the number of categories and components” disclosed in Grab is so large that the combination of ruthenium and PVD coatings “would not be immediately apparent to one of ordinary skill in the art.” Wrigley, 683 F.3d at 1361.
Kennametal, Inc., at *10.
[Obviousness] Kennametal claims that the Board failed to establish a prima facie case of obviousness. Because of the problems relating to cobalt capping, Kennametal contends, it would not have been obvious to combine ruthenium binders with PVD coating.
Id. at *13.
Holdings
[Anticipation] Grab’s express “contemplat[ion]” of PVD coatings is sufficient evidence that a reasonable mind could find that a person of skill in the art, reading Grab’s claim 5, would immediately envisage applying a PVD coating. Grab col.4 l.59. Thus, substantial evidence supports the Board’s conclusion that Grab effectively teaches 15 combinations, of which one anticipates pending claim 1.
Id. at *11.
[Obviousness] [B]ecause a person of skill in the art reading Grab would readily envisage the combination of ruthenium binders and PVD coatings, it would have been obvious to that person that these two could be combined with a reasonable expectation of success. Substantial evidence supports the Board’s finding that this express teaching was not significantly undermined by the problem of cobalt capping, especially in view of the similar teaching of Leverenz.
Id. at *15.
 
 
04/11/15
Category: Administrative Law 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleExela Pharama Sciences, LLC v. Lee, No. 2013-1206 (Fed. Cir. 26, 2015).
IssueThis appeal presents the question of whether a third party has the right to challenge, by way of the Administrative Procedure Act (APA), a ruling of the Patent and Trademark Office reviving a patent application that had become abandoned by failure to meet a filing schedule established by the Patent Cooperation Treaty and its implementing statute.
Exela Pharama Sciences, LLC, at *2.
HoldingWe affirm the dismissal, on the ground that PTO revival rulings are not subject to third party collateral challenge, thereby precluding review regardless of whether Exela’s claims were time-barred.
Id. at *3.
 
04/07/15

Category: Infringement 

  

By: Abby Lin, Contributor  

TitleAqua Shield v. Inter Pool Cover Team, No. 2014-1263 (Fed. Cir. Dec. 22, 2014).
Issues
[1] We deal here only with a challenge to the soundness of the district court’s particular use of IPC’s profits in its rationale.
Aqua, at *10.
[2] Aqua Shield appeals … the finding of no willfulness that led to the denial of enhanced damages and attorney's fees.
Id. at *2.
Holding
[1] Contrary to Aqua Shield’s broader contention, therefore, the district court did not err in considering IPC’s profits. But it did err in treating the profits IPC actually earned during the period of infringement as a royalty cap. That treatment incorrectly replaces the hypothetical inquiry into what the parties would have anticipated, looking forward when negotiating, with a backwardlooking inquiry into what turned out to have happened. See Interactive Pictures, 274 F.3d at 1385 (expectations govern, not actual results).
Id. at *10.
[2] [The district court improperly applied Seagate's two part terms for willfulness analysis by relying on EDNY's denial of Aqua Shield's motion for preliminary injunction based on personal jurisdiction and incomplete analysis on if IPC's design around was implemented. ] We therefore vacate the court’s decision that IPC did not willfully infringe and remand for an analysis that conforms to Seagate’s standard. 497 F.3d at 1371. We do not reach an ultimate conclusion ourselves. We observe, however, that Seagate’s first requirement focuses on whether the infringer’s defenses, as ultimately presented to the court, were reasonable. Bard, 682 F.3d at 1008. [...] we note that the objective baselessness of an infringer’s defenses, assessed on the litigation record, may have a strong bearing on whether the “objectively defined risk” of infringement “was either known or so obvious that it should have been known to the accused infringer.” Seagate, 497 F.3d at 1371 [...]
Id. at *14-15 (text added).

 

 

 

04/03/15
Category: Civil Procedure  
 
 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleVersata Soft., Inc. v. Callidus Soft., No. 2014-1468 (Fed. Cir. Feb. 27, 2015).
Issue[The Fed. Cir. issued opinion on appeal, but joint petition to dismiss case submitted to the district court was not presented to CAFC until after opinion on underlying appeal issued] Due to the unique timing and sequence of events, we stayed issuance of the mandate and directed the parties to respond whether the circumstances require that we vacate our prior opinion.
Versata Soft., Inc., at *2 (text added).
HoldingBecause the parties’ voluntary and unconditional dismissal mooted the appeal before the release of our prior opinion, we vacate the opinion and dismiss the appeal.
Id. at *2.
 
 
Editor Note
This case vacates a previous CAFC precedential opinion issued on the merits of the case, and prior to the controversy being settled. Previous opinion available here.
 
 
 
 
 
03/25/15
Category: Civil Procedure  
 
 
 
By: Roy Rabindranath, Contributor
 
TitleABB Turbo Systems AG v. TurboUSA (Fed. Circ., Dec. 17, 2014).
Issue[…] the only issue we need to address is whether the district court erred in dismissing the trade-secret claim against TurboUSA and Willem Franken.
ABB Turbo, at * 6 (text added).
HoldingWe reverse [the district court’s ruling dismissing the trade-secret claim against the defendants], concluding that the district court relied on judgments about the merits that go beyond what is authorized at the complaint stage. We remand for further proceedings.
Id. at *2 (text added).
 
 
03/21/15
Category: Administrative Law  
 
 
 
By: Christian Hannon, Contributor
 
TitlePresident & Fellows of Harvard v. Lee, No. 2013-1628 (Fed. Cir. Oct. 29, 2014) (Non-Precedential).
Issue[Is there] evidence that [Harvard] had [not actually] paid the requisite terminal disclaimer fee [for U.S. Patent No. 5,087,571 (the '571 patent)] and that, as a result, the terminal disclaimer was not legally entered into the prosecution history for the ’571 patent and was therefore invalid.
President & Fellows of Harvard, at *4.
HoldingWe conclude that the evidence as a whole provides a rational basis for the PTO’s conclusion that the terminal disclaimer fee was paid. As such, we find that the district court properly concluded that the PTO’s decision was not arbitrary or capricious.
Id. at *9.
 
 
 
03/16/15

03/12/15
Category: 103 
 
 
 
 By: Michael Pierorazio, Contributor
 
TitleI/P Engine, Inc. v. AOL Inc., No. 2013-1307, -1313 (Fed. Cir. Aug. 15, 2014) (non-precedential).
Issues
[The Obviousness Determination] The Google Defendants argue that I/P Engine’s claimed invention is obvious as a matter of law because it simply combines content-based and collaborative filtering, two information filtering methods that were well-known in the art.
I/P Engine, Inc., at *8.
[The Jury’s Findings] I/P Engine points to the fact that the jury found that there were differences between the prior art and the claimed invention[…], and argues that on appeal “the only question is whether substantial evidence supports the jury’s findings.”[…].
Id. at *16 (internal citations omitted).
[Secondary Conditions] […] I/P Engine’s argument that the commercial success of Google’s accused advertising systems provides objective evidence of non-obviousness.
Id. at *18.
Holdings
[The Obviousness Determination] [T]he prior art contained explicit statements describing the advantages of combining these two filtering techniques, and […] it would have been obvious to include a user’s query in the filtering process[…]. We […] hold that no reasonable jury could conclude otherwise.
I/P Engine, Inc., at *8 (internal citations omitted).
[The Jury’s Findings] [W]hile the jury made underlying determinations as to the differences between the asserted claims and the prior art, it did not address the ultimate legal conclusion as to obviousness. Thus, while the jury found that the prior art did not disclose all of the elements of the asserted claims[…], it never determined whether it would have been obvious to one skilled in the art to bridge any differences between the prior art and the claimed invention[…].
Id. at *17 (internal citations omitted).
[Secondary Conditions] We find no merit in I/P Engine’s argument that the commercial success of Google’s accused advertising systems provides objective evidence of non-obviousness. Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success. […]. Id. at *18 (footnote omitted)(internal citations omitted) )(internal quotation marks omitted). Accordingly, secondary considerations cannot overcome the strong prima facie case of obviousness[…]. Id. at *19 (footnote omitted)(internal citations omitted).
 
 
03/08/15
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleFenner Inv., Ltd. v. Cellco Partnership, No. 2013-1640 (Fed. Cir. Feb. 12, 2015).
IssueThe district court’s definition of “personal identification number” is the issue on this appeal. Fenner argues that the district court erred by construing “personal identification number” as a number that is associated with the individual user and not with the device. Fenner argues that the plain meaning of “personal identification number” does not contain or require this limited definition,
Fenner Inv., Ltd., at *4.
HoldingWe affirm the judgment [since the written description and prosecution history describe the “personal identification number” to be associated with individual users, and the doctrine of claim differentiation may not expand construction beyond that which is taught by the specification].
Id. at *2(text added).
 
 
 
03/05/15
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.

03/04/15
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).
 
 
 
02/28/15
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.
 
02/24/15
 
 
 
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).
 
 
 
02/20/15
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).
 
 
02/16/15
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.
 
 
 
 
02/12/15
 
 
 
 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.
 
 
 
02/03/15
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).


01/27/15
Category: Administrative Law  
 
 
 
 By: Roy Rabindranath, Contributor 
 
TitleJapanese Found. for Cancer Research v. Lee, No. 2013-1678, 2014-1014 (Fed. Circ. December 9, 2014).
Issue[Whether the district court was correct in ruling that] the PTO acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw the terminal disclaimer on U.S. Patent No, 6, 194,187 (“187 patent”).
Japanese Found., at *2 (Text Added).
Holding[…] we find that the PTO did not act arbitrarily, act capriciously, or abuse its discretion in declining to use any inherent authority that it might have in withdrawing the terminal disclaimer on the ‘187 patent that the Foundation’s attorney of record duly filed in accordance with the PTO’s regulations.
Id. at *17.
 
 
01/23/15
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
 
TitleTeva Pharma. USA, Inc. v. Sandoz, Inc., No. 13-854 (Jan. 20, 2015).
IssueToday’s case involves claim construction with “eviden­tiary underpinnings.” See Part III, infra. And, it requires us to determine what standard the Court of Appeals should use when it reviews a trial judge’s resolution of an underlying factual dispute. Should the Court of Appeals review the district court’s factfinding de novo as it would review a question of law? Or, should it review that fact-finding as it would review a trial judge’s factfinding in other cases, namely by taking them as correct “unless clearly erroneous?”
Teva Pharma. USA, Inc., at *1.
HoldingWe hold that the appellate court must apply a “clear error,” not a de novo, standard of review [when reviewing underlying factual disputes of claim construction, but may apply de novo review when reviewing claim construction generally].
Id. at *1-2 (text added).
 
 
01/20/15
Category: Infringement
 
 
 
By: Abby Lin, Contributor 
 
Case:Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 2013-1472, -1656 (Fed. Cir. Oct. 22, 2014).
Issues
1. “Halo argues that the district court erred in granting summary judgment of no direct infringement with respect to products that Pulse delivered abroad. Halo contends that those products were sold and offered for sale within the United States because negotiations and contracting activities occurred within the United States, which resulted in binding contracts that set specific terms for price and quantity. Halo argues that the location of the sale or offer for sale should not be limited to the location of delivery. Halo also argues that it suffered economic harm in the United States as a result of Pulse’s sales.”
Halo Electronics, at *8-9.
2. “Halo challenges [the district court’s holding that Pulse did not willfully infringement due to relying on its obviousness defense] mainly by arguing that Pulse did not actually rely on any invalidity defense pre-suit when selling the accused products because Pulse’s obviousness defense was developed after the lawsuit was filed in 2007. Halo also contends that after Pulse received Halo’s notice letters in 2002, the Pulse engineer only performed a cursory review of the Halo patents and Pulse did not rely on that analysis to assess whether it was infringing a valid patent. Halo asserts that the court erred in holding that the objective prong was not met simply because Pulse raised a non-frivolous obviousness defense.”
Id. at *17 (text added).
3. “Pulse cross-appeals from the judgment that the asserted claims of the Halo patents were not invalid for obviousness[based on the jury’s findings]”.
Id. at *19 (text added).
Holdings
1. “We agree with Pulse that the district court did not err in granting summary judgment of no direct infringement with respect to those products that Pulse manufactured, shipped, and delivered outside the United States because those products were neither sold nor offered for sale by Pulse within the United States. [Because the products were not sold/offered for sale within the U.S., Halo also did not suffer economic harm.]”
Id. at *9(text added).
2. “We agree with Pulse that the district court did not err in holding that the objective prong of the willfulness inquiry was not satisfied. “Seagate’s first prong is objective, and ‘[t]he state of mind of the accused infringer is not relevant to this objective inquiry.’” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1336 (Fed. Cir. 2009) (alteration in original) (quoting Seagate, 497 F.3d at 1371). The court properly considered the totality of the record evidence, including the obviousness defense that Pulse developed during the litigation, to determine whether there was an objectively-defined risk of infringement of a valid patent.”
Id. at *18.
3. “Pulse did not file a motion during trial under Fed. R. Civ. P. 50(a) on the issue of obviousness before that issue was submitted to the jury and thus waived its right to challenge the jury’s implicit factual findings underlying the nonobviousness general verdict. The district court thus correctly presumed that the jury resolved all factual disputes relating to the scope and content of the prior art and secondary considerations in Halo’s favor. Based upon those presumed factual findings, the court did not err in reaching the ultimate legal conclusion that the asserted claims were not invalid for obviousness.”
Id. at *19-20.
 
 
 
01/15/15
Category: 102 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleDelano Farms Co. v. The California Grape Commission, No. 2014-1030 (Fed. Cir. Jan. 9, 2015).
IssueThe question in a case such as this one is thus whether the actions taken by [a third party that stole the contents of the invention] create a reasonable belief as to the invention’s public availability.
Delano Farms Co., at *7.
HoldingThere is no public use when a third party steals secretive information without authority and endeavors to keep said information secret from the public and a sole disclosure limited to a friend/colleague is not a public use.
See, generally, id. at 11.
 
 
 
01/10/15
Category: 101   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleContext Extraction and Transmission LLC v. Wells Fargo Bank, 2013-1588, -1589, 2014-1112, -1687 (Fed. Cir. Dec. 23, 2014).
Issues
[1: Abstract Idea] Are claims directed to 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory, an abstract idea?
See, generally, Context Extraction and Transmission LLC at *6-7.
[2: Additional Limitations] Does the use of a scanner in a claim limitation - either individually or as an ordered combination— transform the claims into a patent-eligible application?
See, generally, id. at 9.
Holdings
[1: Abstract Idea] [T]he claims of the asserted patents are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.
Id. at *7.
[2: Additional Limitations] CET’s claims merely recite the use of this existing scanning and processing technology to recognize and store data from specific data fields such as amounts, addresses, and dates. See id. There is no “inventive concept” in CET’s use of a generic scanner and computer to perform well-understood, routine, and conventional activities commonly used in industry.
Id. at *9.
 
 
 
01/06/15
The Editors, Administrative Staff and Board of Governors are pleased to announce the newest issue of the Journal of the Patent and Trademark Office Society.
  • Rebutting Obviousness Rejections by Disclosing Impermissible Hindsight Tom Brody Patent PR Eric L. Lane
  • The Google Art Project: An Analysis From a Legal and Social Perspective on Copyright Implications Katrina Wu
  • Short-Circuiting Contract Law: The Federal Circuit’s Contract Law Jurisprudence And IP Federalism Shubha Ghosh
  • Note: Trademarking Social Change: An Ironic Commodification Roger Stronach
  • Note: A Comparative Analysis of the Evolution of Trademark Law in Cuba and the Dominican Republic Ana Cristina Carrera
  • Note: Controlling the Patent Trolls: A Proposed Approach for Curbing Abusive Section 337 Claims in the ITC Matthew Duescher
  • 2014 Author Index
01/03/15
Category: Infringement
 
 
 
By: Roy Rabindranath, Contributor 
 
TitleSSL Services, Inc. v. Citrix Systems, Inc. (Fed. Circ. October 14, 2014).
IssueSSL appeals the district court’s denial of a new trial on non-infringement of claim 27 of [U.S. Pat. 6,061,796], arguing that the district court erred in its claim construction of the terms “intercepting” and “destination address,” and in imposing a set step order requirement for the claim. SSL also appeals the district court’s finding that it was not the prevailing party in the litigation overall. Citrix cross-appeals the district court’s denial of JMOL [“judgment as a matter of law”] of no willful infringement and invalidity of claims 2, 4, and 7 of [U.S. Pat. 6,158,011]. Citrix further contends the district court’s award of prejudgment interest and asserts that certain of its evidentiary rulings justify a new trial on willful infringement and damages.
SSL Services, at *2-3 (text added).
HoldingsBased on the “destination address” limitation, we affirm the denial of a new trial on non-infringement of claim 27 of the ‘796 Patent. Furthermore, we affirm the district court’s denial of JMOL requesting a finding of no willful infringement and invalidity of the asserted claims of the ‘011 Patent. We also affirm the denial of a new trial based on the district court’s evidentiary rulings, and affirm the award of prejudgment interest. Finally, we vacate the district court’s denial of prevailing party status to SSL because we find that SSL is the prevailing party, and remand for an assessment of costs and fees.
Id. at *3.
 
 
12/30/14
Category: Infringement 
 
 
 
By: Christian Hannon, Contributor  
 
TitleAzure Networks v. CSR, No. 2013-1459 (Fed. Cir. Nov. 6, 2014).
Issue
[Standing] [Did the District court properly grant] the Appellees' motion to dismiss Tri-County for lack of standing, finding that Tri-County had effectively assigned Azure the '129 patent.
Azure Networks at *3 (text added).
[Claim Construction] [Did the district court properly construe] the term "MAC address" in the '129 patent as "a device identifier gerenated by the hub device".
Id. (text added).
Holding
[Standing] We agree that the agreement between Tri-County and Azure constituted an effective assignement for purposes of standing, we affirm the dismissal of Tri-County.
Id.
[Claim Construction] The district court improperly construed the term ["MAC address"], we vacate the judgmenet of noninfringement and remand.
Id.
 
 
 
12/27/14
Category: 101  
 
 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleIn re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Lit., No. 2014-1361, -1366 (Fed. Cir. Dec. 17, 2014).
Issues
[I: Composition of Matter Claims] The four composition of matter claims now on appeal are directed to primers, which are “short, synthetic, single-stranded DNA molecule[s] that bind[] specifically to . . . intended target nucleotide sequence[s].” J.A. 13. The court held these were likely patent ineligible because they claim so-called products of nature—that is, they claim the same nucleotide sequence as naturally occurring DNA.
In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Lit., at *5.
[II: Method Claims] Ambry argues that Mayo is directly on point because the method claims here, as there, simply identify a law of nature (the precise sequence of the BRCA genes, and comparisons of the wild-type BRCA sequences with certain mutations of those gene sequences found in the test subject) and apply conventional techniques.
Id. at *13.
Holdings
[I: Composition of Matter Claims] We do not read the Supreme Court’s opinion in Myriad as conferring patent eligibility on composition of matter claims directed to naturally occurring DNA strands under such circumstances. A DNA structure with a function similar to that found in nature can only be patent eligible as a composition of matter if it has a unique structure, different from anything found in nature. Myriad, 133 S. Ct. at 2116–17 (citing Chakrabarty, 447 U.S. at 309–10). Primers do not have such a different structure and are patent ineligible.
Id. at *9.
[II: Method Claims] We need not decide if Mayo is directly on point here because the method claims before us suffer from a separate infirmity: they recite abstract ideas. […] [Furthermore, under the Alice analysis,] [t]he non-patent-ineligible elements of claims 7 and 8 do not add “enough” to make the claims as a whole patent-eligible [because the language only identifies the technique used to compare two gene sequences].
Id. at *13 and *17 (text added).
 
 
 
 
12/24/14
Category: Infringement 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleStryker Corp. v. Zimmer, Inc. No. 2013-1668 (Fed. Cir. Dec. 19, 2014).
Issue[Whether] [t]he district court failed to undertake an objective assessment of Zimmer’s specific defenses to Stryker’s claims [in determining willful infringement].
Stryker Corp. at *18 (text added).
Holding[Because Zimmer’s arguments were founded on reasonable interpretations of claim language that Stryker needed to directly rebut before the jury], we find that Zimmer’s defenses to the infringement of each patent claim that Stryker asserted were not objectively unreasonable, and, therefore, it did not act recklessly.
Id. at *19 (text added).
 
 
 
 
12/17/14
Category: Civil Procedure
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleAnticancer, Inc. v. Pfizer, Inc., No. 2013-1056 (Fed. Cir. Oct. 20, 2014).
Issues[The district court's action, in requiring Anticancer to pay defendants' attorney fees, in order for AntiCancer to supplement its Preliminary Infringement Contentions,] was [an unwarranted] sanction, [...] and that the summary judgment based on the [fee-shifting] was improper.
Anticancer, Inc., at *6 (text added).
HoldingWhen a complaint meets the standards of the Federal Rules, and there has been no reasonable opportunity for discovery and evidentiary development of the issues, it is rarely appropriate to summarily decide the merits against the complainant. We need not intrude upon the district court’s authority to require supplementation of the Preliminary Infringement Contentions when such supplementation may assist the procedures of trial. However, exercise of a court’s inherent authority to levy a sanction as a condition of supplementing the Contentions requires conduct that “constituted or was tantamount to bad faith.”
Id. at *27.

 
12/14/14
Category: 101 
 
 
 
 
By: Abby Lin, Contributor 
 
CasePlanet Bingo, LLC v. VKGS, No. 2013-1663 (Fed. Cir. Aug. 26, 2014) (non-precedential).
Issues
1. Planet Bingo argues that “in real world use, literally thousands, if not millions of preselected Bingo numbers are handled by the claimed computer program,” making it impossible for the invention to be carried out manually [and thus impossible to be done mentally, making it patent eligible].
Planet Bingo, at *4 (text added).
2. Planet Bingo argues that the patents recite “significantly more” than an abstract idea because the invention includes “complex computer code with three distinct subparts.”
Id. at *5.
Holdings
1. But the claimed inventions do not require [thousands of preselected Bingo numbers]… although the ’646 and ’045 patents are not drawn to the same subject matter at issue in Bilski and Alice, these claims are directed to the abstract idea of “solv[ing a] tampering problem and also minimiz[ing] other security risks” during bingo ticket purchases. This is similar to the abstract ideas of “risk hedging” during “consumer transactions,” Bilski, 130 S. Ct. at 3231, and “mitigating settlement risk” in “financial transactions,” Alice, 134 S. Ct. at 2356–57, that the Supreme Court found ineligible. Thus, we hold that the subject matter claimed in the ’646 and ’045 patents is directed to an abstract idea.
Id. at *4(text added, internal citations omitted).
2. [T]he claims recite a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers. And, as was the case in Alice, “the function performed by the computer at each step of the process is ‘[p]urely conventional.’” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1298). Accordingly, we hold that the claims at issue do not have an ‘inventive concept’ sufficient to ‘transform’ the claimed subject matter into a patent-eligible application.
Id. at *6.
 
 
 
12/11/14
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleWorld Class Tech. Corp. v. Ormco Corp., No. 2013-1679, 2014-1692 (Fed. Cir. Oct. 20, 2014).
IssueThe heart of the parties’ dispute is what constraints claim 1 places on the “support surface” during movement of the movable member (slide). As a complement to that issue, the parties also dispute what role is played by the “ledge” surface that lies on the other side of the wire-holding slot from the support surface.
World Class Tech. Corp., at *4.
Holding[W]e conclude that the specification makes clear that the district court correctly resolved the uncertainties in the claim language, adopting a construction that aligns with the description of the invention [which distinguishes “support surface” from a “ledge” surface, and assigns a unique operation to each term,” such that the two terms are not interchangeable].
Id. at *9 (text added).
 
 
 
12/08/14
Category: 101 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleUltramercial, Inc. v. Hulu, LLC, No. 2010-1544 (Fed. Cir. Nov. 14, 2014).
IssueUltramercial argues that the ’545 claims are not directed to the type of abstract idea at issue in Alice—one that was “routine,” “long prevalent,” or “conventional”— and are, instead, directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before.
Ultramercial, Inc., at *8.
HoldingThe process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application.
Id., at *9.
 
12/03/14
Category: Civil Procedure 
 
 
 
By: Christian Hannon, Contributor  
 
TitleJang v. Boston Scientific Corp., No. 2014-134 (Fed. Cir. Sept. 16, 2014).
IssueBoston Scientific Corporation and Scimed Life Systems, Inc. petition for permission to appeal an order of the United States District Court for the Central District of California that denied summary judgment.
Jang at *2.
Holding[W]e conclude that the limited circumstances under which an interlocutory appeal might be
permitted are not met in this case.
Id. at *9.
 
12/01/14

For the past 96 years, the Journal of the Patent & Trademark Office Society has been at the forefront of legal thought in the field of patents, trademarks and copyright. Our articles have launched the careers of countless academics and practitioners and are regularly cited by the Supreme Court. With this history in mind, I am pleased to announce the creation of Edison, a new open access journal which will supplement our print publications.

11/30/14
 
 
 
 
By: Roy Rabindranath, Contributor 
 
TItle:American Calcar v. American Honda Motor Co., Inc. (Fed. Circ. Sept. 26, 2014).
Issue:[Whether] the judgment of the [lower court] finding that U.S. Patent Nos. 6,330,497 ("497 patent"), 6,438,465 ("465 patent"), and 6,542,795 ("795 patent") were unenforceable due to inequitable conduct [was an abuse of discretion].
American Calcar, at *2, 6 (Text Added).
Holding:The defendant proves inequitable conduct "by clear and convincing evidence that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive the PTO." [...] This court held in Therasense that the standard for "the inequitable conduct is but-for materiality." In particular, undisclosed prior art is "but-for material if the PTO would not have allowed a claim had it been aware of" it. [... In regard to the intent prong,] "because direct evidence of deceptive intent is rare a district court may infer intent from indirect and circumstantial evidence," provided that such intent is the single reasonable inference.
Id. at *5-6, 9 (Text Added, Internal Citations Omitted). 
 
 
11/27/14
Category: Civil Procedure 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
Titlee.Digital Corp. v. Futurewei Tech., Inc., No. 2014-1019, -1242, -1243 (Fed. Cir. Nov. 19, 2014).
Issues
[1: Collateral Estoppel] Based on the Colorado Court’s previous construction, the defendants moved to apply collateral estoppel to the construction of the sole memory limitation in the ’774 and ’108 patents. The district court granted the motions and adopted the Colorado Court’s construction. The court reasoned that the ’774 patent reexamination never addressed the sole memory limitation, and further held that the ’108 and ’774 patents are “closely related.”
e.Digital Corp., at *4.
[2: Conversion of Partial Judgment to Final Judgment] e.Digital stipulated to non-final partial judgment of non-infringement with Pantech, GoPro, and Apple, who moved to stay their respective cases pending the Huawei appeal. Apple then moved to convert its judgment to a final judgment, and GoPro, but not Pan- tech, joined the motion.
Id. at *4-5.
Holdings
[1: Collateral Estoppel] We hold that the district court correctly applied collateral estoppel to the ’774 patent because reexamined claim 33 recites the sole memory limitation identical to claims 1 and 19, and because the ’774 patent reexamination never addressed that limitation or the presence of RAM.
Id. at *5.
[2: Conversion of Partial Judgment to Final Judgment] We also hold that the court did not abuse its discretion when it converted a stipulated partial judgment into a final judgment pursuant to Fed. R. Civ. P. 54(b).
Id. at *3 (text added).
 
 
11/24/14
 
Category: Civil Procedure 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleVersata Soft., Inc. v. Callidus Soft., Inc., No. 2014-1468 (Fed. Cir. Nov. 20, 2014).
IssueThe district court considered each factor [for granting a stay pending an AIA CBM post-grant review] and concluded that “[d]espite the presence of Congress’ thumb on the scales of justice,” the balance of factors did not favor a stay [because: (A) a stay in favor of CBM would not simplify issues; (B)the trial date is scheduled within months of the PTAB decision; (C) the motion to dismiss/transfer was an improper tactical advantage; and (D) motion to dismiss/transfer increased the burden of litigation.
Versata Soft., Inc., at *5 (text added).
Holding[T]he district court’s order denying a stay pending the PTAB’s review must be reversed [because: (A) a stay may be warranted even when a CBM proceeding does not address all asserted patents, claims, or invalidity defenses; (B) the PTAB decision is schedule to issue months BEFORE the scheduled trial date and there is no articulation of any critical process prior to the scheduled trial date; (C) the district court did not article why the motion to dismiss is an improper tactic; and (D) the stay will reduce the future burdens of litigation.
Id. at *5 (text added).
 
11/18/14
Category: ITC   
 
 
 
By: Christian Hannon, Contributor 
 
TitleuPI Semiconductor Corp. v. ITC, No. 2013-1157, -1159 (Fed. Cir. Sept. 25, 2014).
IssueBefore the court are the appeal of respondent intervenor uPI Semiconductor Corp. (“uPI”) and the companion appeal of complainant-intervenors Richtek Technology Corp. and Richtek USA, Inc. (together “Richtek”) from rulings of the International Trade Commission in an action to enforce a Consent Order, Certain DC-DC Controllers and Products Containing Same, Inv. No. 337-TA-698 (75 Fed. Reg. 446).
uPI Semiconductor Corp., at *3.
HoldingWe affirm the Commission’s ruling that uPI violated the Consent Order as to the imports known as “formerly accused products,” and affirm the modified penalty for that violation. We reverse the ruling of no violation as to the “post-Consent Order” products. The case is remanded for further proceedings in accordance with our rulings herein.
Id. 
 
 
 
 
11/15/14
Category: Damages   
 
 
 
By: Abby Lin, Contributor 
 
TitleHighmark, Inc. v. Allcare Health Mgmt., No. 11-1219 (Fed. Cir. Sept. 5, 2014).
IssueThis case comes to us on remand from the Supreme Court, which vacated our earlier opinion in which we set aside the district court’s award of attorney fees to appellee Highmark, Inc. (Highmark)..
Highmark, at *2.
Holdings“[Per Supreme Court guidance, instead of de novo review,] an appellate court should review all aspects of a district court’s § 285 determination for abuse of discretion.” Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744, 1747 (2014).
Id. at *4 (text added).
 
 
 
 
 
11/12/14
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleWilliamson v. Citrix Online, LLC, No. 2013-1130 (Fed. Cir. Nov. 5, 2014).
Issues
[1: Claim Construction] [T]he district court issued a claim construction order, construing, inter alia, the following limitations of independent claims 1 and 17: “graphical display representative of a classroom” and “first graphical display comprising...a classroom region” (collectively, the “graphical display” limitations). The district court held that these terms require “a pictorial map illustrating an at least partially virtual space in which participants can interact, and that identifies the presenter(s) and the audience member(s) by their locations on the map.”
Williamson at *8.
[2: Means-Plus] [T]he district court also concluded that the limitation of claim 8, “distributed learning control module,” was a means-plus-function term under 35 U.S.C. § 112, para. 6. The district court then evaluated the specification and concluded that it failed to disclose the necessary algorithms for performing all of the claimed functions.
Id. at *8.
Holdings
[1: Claim Construction] [W]e conclude that the district court incorrectly construed the graphical display terms to have a “pictorial map” limitation [because the e claim language itself contains no such limitation, and there is nothing in the intrinsic record to warrant narrow construction].
Id. at *11.
[2: Means-Plus] The district court here failed to give weight to the strong presumption that 35 U.S.C. § 112, para. 6, did not apply based on the absence of the word “means.” […] [I]n determining that the strong presumption was overcome, the district court erred: (1) in failing to appreciate that the word “module” has a number of dictionary meanings with structural connotations; (2) in placing undue emphasis on the word “module” separate and apart from the claimed expression “distributed learning control module”; and (3) in failing to give proper weight to the surrounding context of the rest of the claim language and the supporting text of the specification in reaching the conclusion that the drafter employed means- plus-function claiming.
Id. at *14.
 
 
 
11/05/14
Category: Claim Construction  
 
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleInterval Licensing LLC v. AOL, Inc., No. 2013-1282, -1283, -1284, -1285 (Fed. Cir. Sept. 10, 2013).
Issues
[1] “Because the district court failed to appreciate that the language describing display ‘in an unobtrusive manner that does not distract a user’ is tied to specific type of display described in the specification [of invalidated claims 4–8, 11, 34, and 35 of U.S. Patent 6,034,652 (“the ’652 patent”)],” Interval argues, the district court “improperly divorced its analysis from the context of the written description and incorrectly focused on irrelevant hypotheticals . . . .”
Interval at *13-14 (text added, internal citation removed).
[2a] What is in dispute, and what we must consider in reviewing the construction of “attention manager,” [as recited in claims 15–18 of the ’652 patent] is whether the district court read the embodiments too narrowly and thus improperly limited the scope of the claim term.
Id. at *20 (text added).
[2b] Interval asks us to clarify that “instructions,” in the context of [claims 15–18 of the ’652 patent], “may encompass ‘data’” and “need not be written ‘in a programming language.’”
Id. at *22-23 (text added, internal citation removed).
Holdings
[1] [A] term of degree [such as "unobtrusive manner"] fails to provide sufficient notice of its scope if it depends “on the unpredictable vagaries of any one person’s opinion.” Interval at *13 (text added, internal citation removed). Had the phrase been cast as a definition instead of as an example—if the phrase had been preceded by “i.e.” instead of “e.g.”—then it would help provide the clarity that the specification lacks. [A] person of ordinary skill in the art would not understand the “e.g.”phrase to constitute an exclusive definition of “unobtrusive manner that does not distract a user.”
Id. at *18 (text added).
[2a] [T]he patents’ [lexicographical] description [...] supports a broader reading [than the traditional term]. [...] [However, not all of] Interval’s proposed modification [...] is not taken directly from the cited “lexicography.”
Id. at *21-22 (text added).
[2b] “[I]f ‘data’ is a type of ‘instructions,’ then the phrase ‘instructions and/or data’ would not make sense.” Id. at *23. [...] [W]e have cautioned against relying on dictionary definitions at the expense of a fair reading of the claims, which must be understood in light of the specification. [...] [T]he [dictionary definition] on which the district court relied suggests a broader construction of “instructions” than the court adopted.
Id. at *25 (text added).
 
 
 
11/02/14
Category: Infringement 
 
 
 
 By: Christian Hannon, Contributor  
 
TitleFerring B.V., v. Watson Labs., No. 2014-1416 (Fed. Cir. Aug. 22, 2014).
IssueThis appeal raises questions of validity and infrignement[.]
Ferring B.V. at *8.
HoldingWe conclude that the district court did not err in holiding that Watson failed to prove by clear and convincing evidence that the asserted claims are invalid as obvious [...] [and] conclude that the district court's finding that Watson's generic tranexamic acid product infringes Ferring's asserted claims was not in accordance with law and therefore reverse that judgment. Id. at *2.
 
 
 
10/30/14
Category: Infringement 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleIris Corp. v. Japan Airlines Corp., No. 2010-1051 (Fed. Cir. Oct. 21, 2014).
IssueAL moved to dismiss IRIS’s suit for failure to state a claim upon which relief can be granted. See Fed. R. Civ. P. 12(b)(6). […] JAL argued that federal laws requiring the examination of passports conflict with the patent laws and therefore exempt JAL from infringement liability.
Iris Corp. at *3.
HoldingAccordingly, because JAL’s allegedly infringing acts are carried out “for the United States” under 28 U.S.C. § 1498(a), we affirm the district court’s decision to dismiss IRIS’s suit.
Id. at *6.
 
 
 
 
10/26/14
Category: Claim Construction 
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleHill-Rom Serv., Inc. v. Stryker Corp., No. 2013-1450 (Fed. Cir. June 27, 2014).
Issues
[1] Hill-Rom argues that the district court erred by limiting “datalink” to [...] a wired datalink. It argues that “datalink” should be given its plain and ordinary meaning[.] Hill-Rom at *4 (text added). [Similarly,] Hill-Rom argues that the “interface board including a processor” should be given its plain and ordinary meaning[.] Id. at *12 (text added).
[2] The parties also dispute [...] whether the claimed “message validation information” must verify that the message is properly received or received exactly, bit by bit, as sent. Id. at *17 (text added).
[3] [D]uring prosecution of a later, unrelated patent, U.S. Patent No. 8,121,856 [...], the examiner rejected claims as obvious over three references [including] [the Ulrich reference], which has the same specification as the [asserted U.S. Patent No. 5,699,038 (’038 patent)]. [...] In response, Hill-Rom added a limitation that the monitoring device receives a user request for a specific subset of data and that the specific subset of data be transmitted without transmitting the other available data. Hill-Rom argued that adding this limitation overcame the obviousness rejection because this added limitation was not disclosed in the Ulrich reference[.] [The district court, upon its conclusion that judicial estoppel prevented Hill-Rom from any broader construction] construed “bed condition message” as “a message not generated in response to any user request that contains the status of all conditions the bed is capable of monitoring.”
Id. at *19-20 (text added).
Holdings
[1] There are no magic words that must be used, but to deviate from the plain and ordinary meaning of a claim term to one of skill in the art, the patentee must, with some language, indicate a clear intent to do so in the patent.
Hill-Rom Serv., Inc., at *7 (text added).
[2] A construction that would exclude the preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.”
Id. at *19 (internal citation removed, text added).
[3a] [W]e are bound by prior panel decisions. [...] [S]tatements made during prosecution of a later, unrelated patent cannot form the basis for judicial estoppel. [...] [3b] For judicial estoppel to apply, a parties’ later position must be clearly inconsistent with the earlier position.
Id. at *22 (text added).
 
 
10/23/14
Category: Civil Procedure 
 
 
 
 By: Eric Paul Smith, Contributor
 
TitleMformation Techs., Inc. v. Research in Motion Ltd., Nos. 2012-1679, 2013-1123 (Fed. Cir. Aug. 22, 2014).
Issues
[1] Whether "Mformation waived its right to argue that the district court changed its claim construction post-verdict . . . ."
Mformation Techs., Inc., at *7.
[2] Whether "the district court impermissibly added an order-of-steps claim requirement postverdict in its JMOL opinion . . . ."
Id. at *9.
[3] "[W]hether claim 1 of the '917 patent requires that a connection be completely established before transmission."
Id. at *12.
[4] Whether "BlackBerry is . . . entitled to JMOL even if an order-of-steps requirement is read into the claims."
Id. at *15.
Holdings
[1] "Mformation did not waive its right to challenge whether the district court altered its claim construct post-verdict . . . ."
Id. at *9.
[2] "[T]he district court at most clarified its previous construction that was already present in the jury instructions."
Id. at *11.
[3] "[C]laim 1 requires that a connection be established before transmission. . . . [T]he separate sub-step for establishing a connection would become 'superfluous' if we concluded that a connection did not have to be established (completed) before transmission."
Id. at *14.
[4] "[W]e affirm the district court's grant of JMOL of no infringement."
Id. at *16.
10/21/14
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleCardSoft, LLC v. Verifone, Inc., No. 2014-1135 (Fed. Cir. Oct. 17, 2014).
IssueVeriFone appeals the district court’s construction of “virtual machine,” found in all asserted claims. It argues that the district court erred by not requiring the claimed “virtual machine” to include the limitation that the applications it runs are not dependent on any specific underlying operating system or hardware.
CardSoft, LLC, at *5.
Holding[T]he district court’s construction does not reflect the ordinary and customary meaning of “virtual machine” as understood by a person of ordinary skill in the art [to mean an interpreter platform between applications and the underlying hardware or operating system.]
Id. at *5 (text added).
 
 
10/18/14
Category: Civil Procedure 
 
 
 
 By: Christian Hannon, Contributor 
 
TitleVermont v. MPHJ Tech. Invs., No. 2014-1481 (Fed. Cir. Aug. 7, 2014).
IssueMPHJ Technology Investments, LLC (“MPHJ”) petitions this court for a writ of mandamus, and also appeals from an order of the United States District Court for the District of Vermont remanding this case to state court.
MPHJ Tech. Invs., at *2.
HoldingBecause we lack jurisdiction to grant the requested relief, we dismiss the petition and appeal.
Id. at *2.
 
 
 
10/16/14
Category: Antitrust  
 
 
 
By: Roy Rabindranath, Contributor 
 
TitleTyco Health Group LP v. Mutual Pharmaceutical Company, Inc. (Fed. Circ. August 6, 2014).
Issue[Whether the district court’s summary judgment order that Tyco did not violate the antitrust laws by [(1) filing an alleged “sham infringement lawsuit”] against Mutual or [(2)] by filing [an alleged sham “citizen petition”] with the Food and Drug Administration (“FDA”) seeking to bar Mutual from obtaining FDA permission to market its generic version of one of Tyco’s drugs [under Mutual’s Abbreviated New Drug Application (ANDA) with the FDA].
Tyco Healthcare Group, at *2 (text added).
HoldingThere is a recognized exception to Noerr-Pennington immunity for “sham litigation,” which the Supreme Court has defined as litigation that (1) is “objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits” (the objective element), and (2) is motivated by a desire “to interfere directly with the business relationships of a competitor” (the subjective element). Prof’l Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 60-61 (1993) (“PRE”). […] PRE’s two part test, however, is not limited to court litigation; it has been applied to administrative petitions, including FDA citizens petitions.
Id. at *8 15 (text added, internal citations omitted).
 
 
10/14/14
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleVirtualagility Inc. v. Salesforce.com, Inc., No. 2014-1232 (Fed. Cir. July 10, 2014).
Issue
[Factors A and D] The district court concluded that the first factor— simplification of the issues—was “essentially neutral, if not slightly against” granting a stay because it was “not convinced” by the PTAB’s assessment that cancellation of some or all of the claims during CBM review was “probable.”
Virtualagility Inc., at *6.
[CBM Amendment] Defendants argued that the fact that VA has already filed a motion to amend claims in the CBM proceeding increased the likelihood that the CBM proceeding will simplify issues. In its decision denying the motion to stay pending appeal, the court observed that VA’s proposed amendments to the ’413 patent claims in the CBM proceeding were not a part of the record at the time of its decision on the motion now on appeal.
Id. at *7.
[Factor B] Defendants argue that the district court correctly concluded that the early stage of the litigation favors a stay. Defendants contend, however, that the district court did not weigh this factor heavily enough in favor of the stay because it erroneously considered the case’s status at the time it ruled on the motion rather than at the time when the motion was filed—seven months earlier.
Id. at *15.
[Factor C] Defendants argue that the district court erred in concluding that a stay would unduly prejudice VA. They contend that VA will not suffer undue prejudice because the timeframe for CBM review is short. They argue that, in any event, mere delay in having one’s claim adjudicated does not constitute undue prejudice. Defendants argue that VA has not identified any actual risk of fading memories or potentially unavailable evidence.
Id. at *20.
Holdings
[Factors A and D] We conclude that the district court clearly erred in finding that the first factor was neutral or slightly against a stay, and that the fourth factor weighed only slightly in favor of a stay. We hold that these factors strongly favor a stay in this case. The district court erred as a matter of law to the extent that it decided to “review” the PTAB’s determination that the claims of the ’413 patent are more likely than not invalid in the posture of a ruling on a motion to stay. Under the statutory scheme, district courts have no role in reviewing the PTAB’s determinations regarding the patentability of claims that are subject to CBM proceedings.
Id. at *11.
[CBM Amendment] We conclude that it is proper for us to consider the fact that VA filed a Motion to Amend in our review of the district court’s decision. Defendants did not waive the arguments regarding claim amendments. They argued to the district court that claim amendments during PTAB review are a distinct possibility and, in doing so, gave VA an opportunity to respond to this argument below. […] We also conclude that we are not improperly expanding the record on appeal if we consider the Motion to Amend. […] Cognizant of the limits imposed by Rule 201(b)(2), however, we reiterate that we consider only the fact that a Motion to Amend was filed— not the impact of the proposed amendments on the parties’ claim construction and infringement arguments.
Id. at *10-11 (internal citations omitted).
[Factor B] We hold that the timing factor heavily favors a stay. We note at the outset that it was not error for the district court to wait until the PTAB made its decision to institute CBM review before it ruled on the motion. Indeed, while some district courts ruled on motions to stay before the PTAB granted the petition for post-grant review […], others have waited until post-grant review was instituted, and still others denied as premature the motion to stay without prejudice to refiling after institution of post-grant review […]. We express no opinion on which is the better practice. While a motion to stay could be granted even before the PTAB rules on a post-grant review petition, no doubt the case for a stay is stronger after post-grant review has been instituted.
Id. at *16 (internal citations omitted).
[Factor C] We conclude that the district court clearly erred in finding that the undue prejudice factor weighed heavily against a stay. At best, this factor weighs slightly against a stay. We agree with the district court that competition between parties can weigh in favor of finding undue prejudice.
Id. at 21.
 
 
 
 
10/08/14
Category: Administrative Law  
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleTroy v. Samson Manuf. Corp., No. 2013-1565 (Fed. Cir. July 11, 2014).
Issues
[1] Mr. Troy challenges the district court’s refusal to consider evidence pertaining to issues not raised before the Board [in a civil action under 35 U.S.C. § 146].
Troy at *4 (text added).
[2] [E]ven if [Kappos v. Hyatt, 132 S. Ct. 1690 (2012)] requires that the district court admit such new evidence, this holding is applicable to [35 U.S.C. § 145] actions only.
Id. at *8 (text added).
Holdings
[1] "We conclude that the Supreme Court’s decision in Hyatt permits new evidence to be admitted without regard to whether the issue was raised before the Board."  Troy at *5 (text added). "[T]o the extent that our prior precedent, see, e.g., Conservolite v. Widmayer, 21 F.3d 1098, 1102 (Fed. Cir. 1994), held that new evidence on an issue not presented to the Board was generally to be excluded in district court proceedings, it is no longer viable following the Supreme Court’s Hyatt decision." Id. at *6 (text added).
[2] [T]he Supreme Court’s decision in Hyatt applies with equal force to both § 145 and § 146 actions.
Id. at *10 (text added).
 
 
10/06/14
Category: Civil Procedure 
 
 

By: Christian Hannon, Contributor 
 
TitleTaylor v. Taylor Made Plastics, Inc., No. 2014-1212 (Fed. Cir. May 9, 2014)(non-precedential).
Issue[Did] James T. lack[] standing because Mary T. [,James T.'s ex-wife,] was a co-owner of the '566 patent by virtue of the divorce, and she had not joined the suit.
Taylor at 2 (txt added).
Holding[Yes,] [t]he long-established rule is that a suit for patent infringement must join all co-owners of the patent as plaintiffs.
Id. at *3 (text added).
 
 
10/03/14
Category: Post-Grant Proceedings  
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleBenefit Funding Sys., LLC v. Advance Am. Cash Advance Centers Inc.., No. 2014-1122, -1124, -1125 (Fed. Cir. Sept. 25, 2014).
IssueAppellants’ argument on appeal rests on the single premise that the PTAB is not authorized to conduct CBM review based on § 101 grounds. Consequently, according to Appellants, the district court would not be bound by the results of the CBM review […]
Benefit Funding Sys., LLC, at *6.
HoldingThe argument that § 101 cannot support CBM review is a collateral attack [since a district court should not review the PTAB’s determination that contested claims are more likely than not invalid in the posture of a ruling on a motion to stay.]
Id. at *6-7 (text added).
 
 
10/01/14
Category: Infringement 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleEMD Millipore Corp. v. AllPure Tech., Inc., No. 2014-1140 (Fed. Cir. Sept. 29, 2014).
Issues
[A. No Literal Infringement] Millipore claims that when the TAKEONE device is disassembled, all components of the transfer member are still removed from the magazine part (135), even if the components of the seal [...] are no longer physically connected. […]
EMD Millipore Corp. at *7.
[B. Prosecution History Estoppel Bars Millipore’s Doctrine of Equivalents Arguments] AllPure argues that the district court should not have considered whether Millipore could maintain a claim for infringement under the doctrine of equivalents because prosecution history estoppel bars such a claim.
Id. at *10.
Holdings
[A. No Literal Infringement] [W]e conclude that there is no genuine issue of material fact relating to whether the TAKEONE device literally contains “at least one removable, replaceable transfer member[,]” [because the TAKEONE device lacks a seal when it is disassembled, it necessarily lacks the claimed “removable, replaceable transfer member.”]
Id. at *7 (text added).
[B. Prosecution History Estoppel Bars Millipore’s Doctrine of Equivalents Arguments] The district court should have proceeded under the presumption that prosecution history estoppel applies [because, at the time of prosecution, the patentee amended claims to alter the scope in response to an Office Action. The amendment including both deletions and additions to the claim scope.].
Id. at *12 (text added).
 
 
 
 
 
09/29/14
Category: Civil Procedure 
 
 
 
 By: Samuel Dillon, Contributor
 
TitleCEATS, Inc. v. Continental Airlines, Inc., No. 2013-1529 (Fed. Cir. June 24, 2014).
Issues[Whether the district court abused its discretion in] finding that [(1)] the mediator had no duty to disclose his dealings with one of the firms involved in the litigation [such that (2)] relief from judgment under Rule 60(b) was not warranted.
CEATS at *3 (text added).
Holdings
[1] We find that the district court erred in finding that a reasonably objective person would not have wanted to consider circumstances surrounding the Karlseng litigation when deciding whether to object to Faulkner’s appointment as mediator in this case. . . . In this case, at the same time Faulkner served as the court-appointed mediator, the Faulkner-Johnson-Fish relationship was directly at issue in a state appellate court. Importantly, this meant that Fish, as a firm, was actively defending Faulkner’s personal disclosure decisions while he was mediating this case. . . . Furthermore, the Texas appeals court’s decision . . . found that the Faulkner-Johnson-Fish relationship was a disqualifying, social and business relationship, which “could reasonably be seen as raising a question about the mediator’s impartiality” while this case was ongoing.
Id. at *14-15.
[2] We agree with Continental that CEATS has failed to show a meaningful risk of injustice in this case . . . , we do not believe there is a sufficient threat of injustice in other cases to justify the extraordinary step of setting aside a jury verdict . . . , [and] we do not believe that refusing to grant the relief CEATS seeks will undermine public confidence in the judicial process as a whole. . . . [W]e hold that the district court correctly denied CEATS relief from judgment under Rule 60(b)(6), despite what we deem to be a failure of the mediator’s disclosure obligations.
Id. at *18-20.
 
 
 
 
 
09/28/14
Category: Claim Construction 
 
 
 
By: Abby Lin, Contributor 
 
TitleH-W Tech., LC v. Overstock.com, Inc., No. 2014-1054, -1055 (Fed. Cir. July 11, 2014).
Issues:
1) H-W appeals the district court’s construction of the claim terms “user of said phone” and “said user” to mean “a consumer operating the IP Phone.” H-W argues that the correct construction is “a person or thing that uses an IP phone.”
H-W Tech. LC, at *3 (internal citations omitted).
2a) [H-W appeals the summary judgment finding that claim 9, as presented prior to Certificate of Correction] is indefinite] H-W first argues that the district court itself had authority to correct the error in claim 9.
Id. at *5 (text added).
2b) H-W also argues that the district court “failed to factor the certificate of correction in [its] determination that claim 9 of the ‘955 Patent is indefinite and invalid.”
Id. at *8 (text added).
2c) Having concluded that the district court properly did not correct the patent claims itself or apply the certificate of correction to this lawsuit, the question remains whether H-W should be permitted to assert claim 9 uncorrected.
Id. at *9.
3) Finally, H-W appeals the district court’s holding that claim 17 is indefinite and invalid.
Id. at *10.
Holdings:
1) In sum, the only significant evidence that supports H-W’s position is a single, arguably marginally applicable, dictionary definition. The district court’s construction, on the other hand, is supported by the claims themselves, the specification, and the weight of the extrinsic evidence. We thus affirm the district court’s construction of “user of said phone” and “said user” to mean “a consumer operating the IP Phone.”
H-W Tech. LC, at *5.
2a) The parties appear to agree that the PTO’s error is clear on the face of the prosecution history. But this court has already deemed evidence of error in the prosecution history alone insufficient to allow the district court to correct the error. See Grp. One, 407 F.3d at 1303 (“The error here is not evident on the face of the patent. The prosecution history discloses that the missing language was required to be added by the examiner as a condition for issuance, but one cannot discern what language is missing simply by reading the patent. The district court does not have authority to correct the patent in such circumstances.”). In sum, we hold that the district court did not have authority to correct the error in claim 9 and correctly declined to do so.
Id. at *8.
2b) Based on the plain language of the statute, this court has specifically held that “[t]he certificate of correction is only effective for causes of action arising after it was issued.” Sw. Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1294–95 (Fed. Cir. 2000). [Since H-W filed before the Certificate of Correction issued, the District Court did not err.]
Id. at *9 (text added).
2c) When, as here, a claim issues that omits a material limitation, and such omission is not evident on the face of the patent, the patentee cannot assert that claim until it has been corrected by the PTO…. Regardless, the district court was correct to conclude that H-W cannot assert either the original or corrected versions of claim 9 in this lawsuit. The judgment of the district court in favor of Overstock and against H-W is thus correct. Still, in order to clarify that claim 9, as corrected, has not yet been litigated and, thus, has not been held invalid, we strike the portion of the judgment that holds claim 9 invalid.
Id. at *9-10.
3) And, as in those cases [IPXL and In re Katz], it is unclear here when infringement would occur. Claim 17 is thus indefinite. Accordingly, we affirm the district court’s holding that claim 17 is invalid.
Id. at *13.
 
 
09/23/14
Category: Civil Procedure 
 
 
 
 By: Karthik Subramanian, Contributor 
 
TitleMedism Ltd. v. Bestmed, LLC, No. 2013-1451 (Fed. Cir. July 14, 2014).
Issue“This appeal concerns Medisim’s challenges to the district court’s grant of JMOL on anticipation and unjust enrichment. Medisim argues that BestMed forfeited its right to JMOL under Rule 50(b) for both claims when it failed to properly move for JMOL under Rule 50(a) at the close of evidence. Medisim also challenges the district court’s grant of JMOL on anticipation and unjust enrichment on the merits. Finally, Medisim argues that the district court abused its discretion by granting a conditional new trial on anticipation. We address each of Medisim’s challenges in turn.”
Medisim at *6.
Holding“Because BestMed failed to preserve its right to JMOL on anticipation under Federal Rule of Civil Procedure 50, we vacate the district court’s grant of JMOL on that claim. However, we affirm the district court’s grant of JMOL on Medisim’s unjust enrichment claim and its conditional grant of a new trial on anticipation. We remand this case for further proceedings.”
Medisim at *2.
 
 
09/19/14
Category: Civil Procedure
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
 
TitleSCA Hygene Prod. Aktiebolag v. First Quality Baby Prods., LLC, No. 2013-1564 (Fed. Cir. Sept. 17, 2014).
Issues
[1: Laches] SCA argues that the reexamination proceedings preclude application of the laches presumptions in this case because the reexamination period should be excluded from the total delay. The district court rejected that theory. In its view, because SCA filed suit more than six years after first learning of First Quality’s allegedly infringing activities, the laches presumptions applied.
SCA Hygene Prod. Aktiebolag at *9.
[2: Equitable Estoppel] The district court ruled that “SCA unquestionably misled First Quality though [sic] its 2003 letter and subsequent inaction.” [...] The court focused on SCA’s failure to respond to First Quality’s letter addressing the ’646 patent and on SCA’s decision to write First Quality regarding different products and a different patent.
Id. at *16 (internal citations omitted).
Holdings
[1: Laches] Because more than six years elapsed between the time SCA first learned of First Quality’s allegedly infringing activities and the time SCA filed infringement claims directed to those activities[, during which SCA monitored the infringing activities of First Quality], the district court properly found that the laches presumptions applied.
Id. at *9 (text added).
[2: Equitable Estoppel] SCA almost immediately filed a request for ex parte reexamination of the ’646 patent to address the issues raised by First Quality—an action that could reasonably be viewed as inconsistent with SCA’s alleged acquiescence. Thus, record evidence supports a version of events that differs from First Quality’s. A reasonable juror could conclude that First Quality raised an issue SCA had overlooked and that SCA, rather than acquiescing, took immediate action.
Id. at *19.


09/18/14
Category: ITC   
 
 
 
By: Roy Rabindranath, Contributor 
 
TItleAlign Tech., Inc. v. International Trade Commission (Fed. Circ. July 18, 2014).
IssueThe International Trade Commission's regulations authorize the Commission to review a decision of an administrative law judge (ALJ) when that decision is designated as an "initial determination." [...] Here, the ALJ denied a motion via an order. This case requires us to consider whether the Commission's review of that order was procedurally sound.
Align Technology, at *2.
HoldingBecause the Commission circumvented its own rules without waiving, suspending, or amending them, we find that its review of Order No. 57 was "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law."
Id. at *10. 
 
 
09/15/14
 Category: 103
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleScientific Plastic Prod., Inc. v. Biotage AB, No. 2013-1219, -1220, -1221 (Fed. Cir. Sept. 10, 2014).
IssuesThe examiner concluded that it would have been obvious to combine the cartridge of Yamada with the cap of either King or Strassheimer. On appeal to the Board, SPP challenged (1) the examiner’s determination that King and Strassheimer were “analogous art” and (2) that it would have been obvious to combine the LPLC cartridge of Yamada with the pressure-resistant resealable cap of either King or Strassheimer.
Scientific Plastic Prod., Inc., at *5 (emphasis added).
Holdings
[(1)] [T]he King and Strassheimer references address the problem of providing a fluid tight seal at elevated pressures, between a container and a resealable cap. This is sufficiently close to the problem addressed by the claimed invention; substantial evidence supports the Board’s finding that King and Strassheimer are available as prior art
Id. at *9 (text added).
[(2)] We conclude that the Board did not err in holding that it would have been obvious for a person of ordinary skill in the field of the invention to modify the chromatography cartridge of Yamada with the resealable threaded cap of King or Strassheimer [because by providing for the presence of an O-ring, the Yamada reference implicitly acknowledges that there is a potential leakage issue between the cap and column body of the plastic cartridge that could be cured by either King or Strassheimer].
Id. at *11 (text added).
 
09/10/14
 Category: Civil Procedure
 
 
 By: John Kirkpatrick, Contributor 
 
TitleMicrosoft Corp. v. Motorola, Inc., No. 2014-1089 (Fed. Cir. May 5, 2014) (non-precedential).
Issue[Does the Federal Circuit have jurisdiction under 28 U.S.C. § 1338(a)] based on the district court’s consolidation of Microsoft’s contract action with its patent infringement action[?]
Microsoft Corp. at *6 (text added).
HoldingThe patent infringement complaint is not part of this appeal, not having been decided by the district court. Under such circumstances, it is plausible to conclude, as the Ninth Circuit seems to have done here, that the act of “consolidation d[id] not merge the suits into a single cause, or change the rights of the parties.” Id. at *6 (internal citations removed).
 
 
09/09/14
Category: Licensing  
 
 
 
By: Christian Hannon, Contributor 
 
TitleWi-LAN USA Inc. v. Ericsson, Inc., No. 2013-1566 (Fed. Cir. Aug. 1, 2014).
IssueThe parties disagree about the correct interpretation of multiple parts of the [Most-Favoured Licensee ("MFL")] Provision, including whether it applies to patents that Wi-LAN acquried after the execution of the PCRA.
Wi-LAN USA, Inc., at *7.
HoldingBecause we conclude that the MFL Provision does not apply to patents acquired after the execution of the PCRA, Ericsson's rights under the MFL Provision were not triggered by the Texas suit. We therefore, reverse the Florida court's dismissal of Wi-LAN's infringement suit with respect to the Florida Patents. [...] We also affirm the Texas court's finding that the MFL provision did not bar Wi-LAN's Texas suit, albeit on different grounds.
Id. at *17. 
 
 
09/06/14
Category: Claim Construction   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleEpos Tech. Ltd. v. Pegasus Tech. Ltd., No. 13-1330 (Fed. Cir. Sept. 5, 2014).
Issues
[1: "Drawing Implement"] The district court construed “drawing implement” as “a conventional writing utensil that can be used alone or together with the invention.” […] [It] explained that the language of the claims is “exceedingly broad,” but that the remainder of the patent is not “so broad as to contemplate using something like ‘a piece of charcoal.’” […]
Epos Tech. Ltd. at *7 (internal citations omitted, text added).
[2: “Given Time Interval”] The district court construed “given time interval” as “fixed at a few seconds or less.” […] [It] explained that, “while the words of the claims do not limit the time interval, all evidence suggests there must be some upper-bound to the interval contemplated by the patentee.” […]
Id. at *8-9 (internal citation omitted, text added).
[3: "Marking Implement"] The district court construed “marking implement” as “an implement that has a marker tip (and not a pen tip).” […] It determined that, “while the specifications occasionally reference a ‘pen’ and ‘pen tip,’ the totality of the specifications makes clear that the patentee was merely using those terms as synonyms for a dry-erase marker.”
Id. at *11.
[4: “Temporary Attachment”] The district court construed “temporary attachment” as “an element that can be removed from the device’s ‘retrofittable apparatus.’”
Id. at *14.
Holdings
[1: "Drawing Implement"] Although it is true that the specifications recite embodiments including “conventional” writing implements, there is no clear indication in the intrinsic record suggesting that the claims are limited to “conventional” drawing implements [since the claims do not state the term, and the specification lists multiple drawing implements, only one of which is a “conventional” implement].
Id. at *8 (text added).
[2: “Given Time Interval”] Although the word “given” may indicate that a time interval is fixed, specified, or predetermined by an operator or a programmer, the intrinsic evidence does not limit “given time interval” to “fixed at a few seconds or less[,]” [because the patents do not require an upper bound for a period of time, but rather state that the disclosed periods of time as ‘preferable’ and ‘typical.’]
Id. at *9 (text added).
[3: "Marking Implement"] Given […] broad disclosures [which interchangeably refers to a “marking implement” as either a marker or a per], the district court erroneously construed “marking implement” to require a “marker tip” and to exclude implements with a “pen tip.”
Id. at *11 (text added).

[4: “Temporary Attachment”] The district court’s construction is incorrect because it reads out preferred embodiments [and there is no highly persuasive amount of evidentiary support for such an exclusion].
Id. at *14 (text added).

 
09/04/14
Category: 101    
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitlebuySAFE, Inc. v. Google, Inc., No. 13-1575 (Fed. Cir. Sept. 3, 2014).
IssueThe district court granted Google’s motion for judgment on the pleadings, holding that the asserted claims fall outside section 101. The court concluded that the patent “describes a well-known, and widely-understood concept—a third party guarantee of a sales transaction— and then applied that concept using conventional computer technology and the Internet.”
buySAFE, Inc. at *4.
HoldingUnder the approach to section 101 affirmed by the Supreme Court in the recent decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the district court’s holding is correct [because: (1) the claims encompass only a contractual relationship, an abstract idea; and (2) the claimed computer functionality of receiving and transmitting ‘an offer of guarantee’ is a generic implementation that does not add an inventive concept.].
Id. at *2 (text added).
 
 
09/01/14
Category: Infringement 
 
 
 
By: Samuel Dillon, Contributor 
 
TitleIntouch Technologies, Inc. v. VGO Comm., Inc., No. 2013-1201 (Fed. Cir. May 9, 2014).
Issues
[1] Claim construction[Whether the district court erred in construing] the ’030 patent claim term [a] “arbitrating to control” and the ’357 patent claim terms “arbitrator” and [b] “call back mechanism.”
InTouch at *17 (text added).
[2] Infringement[Whether the district court was correct to find that] all three [jury] verdicts of non-infringement [were] supported by substantial evidence [when considering certain] limitations: [a] arbitrator/arbitrating, [b] call back mechanism, [c] camera movement [...]
Id. at *22 (text added).
[3] Invalidity[Whether the district court was correct to find] that the record supports the jury’s verdict of invalidity for the ’357 and ’030 patents.
Id. at *33 (text added).
Holdings
[1] Claim construction
[a: Arbitrator/Arbitrating] [I]t is clear that, for the arbitrator to control access, it needs the capability to consider and resolve access requests from and among multiple users. . . . For these reasons, we conclude that the district court did not err in construing the terms “arbitrator” and “arbitrating” to require a determination of which user among multiple users has exclusive control of the robot.
InTouch at *18-19.
[b: Call Back Mechanism] The plain language of the claim supports the district court’s construction. The phrase, “call back mechanism,” on its face connotes an intention to call back a user that was previously denied access.
Id. at *20.
[2] Infringement
[a: Arbitrator/Arbitrating] Because others cannot access the robot until the user releases control, the VGo system never considers and resolves competing requests for that robot, and thus, does not “determine” which user has exclusive control of the robot. Consequently, the VGo system lacks an “arbitrator.”
Id. at *24.
[b: Call Back Mechanism] [T]he VGo system cannot even identify any user that wants access, and it certainly does not know who may have previously sought access, but was denied. . . . Based on these conclusions, we find that substantial evidence supports the jury’s finding of non-infringement of claim 79 of the ’357 patent.
Id. at *30.
[3] InvalidityWhile our standard of review regarding the jury’s implied factual findings is a stringent one, we agree with InTouch that the evidence on which VGo relies is not substantial enough to support an obviousness finding. Indeed, it did not even come close. Dr. Yanco’s testimony was plagued with numerous problems, including her failure to: (1) identify sufficient reasons or motivations to combine the asserted prior references; (2) focus on the relevant time frame of 2001; or (3) consider any objective evidence of nonobviousness. Dr. Yanco’s testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.
Id. at *34-35.
 
 
 
08/29/14
 
 
 
By: Karthik Subramanian, Contributor 
 
TitleLochner Tech., LLC v. Vizio, Inc., No. 2013-1551 (Fed. Cir. June 27, 2014) (non-precedential).
IssueLochner takes issue with the district court’s belief that use of an open-ended term “including” requires patentees to disclose the recited as well as unrecited elements that are present in the accused infringing products.
Lochner Tech., LLC at *15.
Holding“After careful consideration, we find that the district court erred when it assumed that use of the term “including” somehow trumped consideration of the specification and prosecution history and displaced application of standard claim construction principles."
Id. at *16.
 
 
08/27/14
Category: Damages  
 
 
 
 By: Eric Paul Smith, Contributor
 
TitleRectractable Tech., Inc. v. Becton Dickinson & Co., No. 2013-1567 (Fed. Cir. Jul. 7, 2014).
IssueWhether "[the Federal Circuit's] mandate, reversing the infringement verdict [for one product but not the other], required the district court to conduct new damages proceedings because the original judgment is inconsistent with that mandate."
Retractable Tech. at *4.
Holding"The damages award was within the scope of the appealed judgment and thus was incorporated into the mandate when Becton failed to raise the issue of a remand to consider parsing damages by product." Id. at *8. "[T]he mandate rule forecloses the relief that Becton seeks . . . ." Id. at *11.
 
 
08/25/14
Category: Double Patenting  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleAbbvie Inc. v. Kennedy Inst. of Rheumatology Trust, No. 2013-1545 (Fed. Cir. Aug. 21, 2014).
Issues
[1: : ODP and Uruguay Round] Kennedy argues that the statutory and policy rationales underlying the obviousness-type double patenting doctrine no longer exist and the doctrine should be discarded. More specifically, Kennedy contends that the Uruguay Round Agreement Act (URAA), Pub. L. 103-465, 108 Stat. 4809, effective June 8, 1995, and its implementation of a 20-year period of patent protection that runs from a patent’s earliest claimed priority date, eliminated the need for the obviousness-type double patenting doctrine.
Abbvie Inc. at *10.
[2: ODP and Genus-Species Patent Family] [Whether] “[…]the differences in subject matter between the claims” of the ’766 and ’442 patents render their claims “patentably distinct” because the ’442 patent applies to [‘][treating] patients with active disease[,’] [which is a species of the ‘766 patent genus characterization as ‘treating all patients in need thereof’].
Id. at *21 (internal citations omitted, text added).
Holdings
[1: : ODP and Uruguay Round] Although this court has recognized that the doctrine of obviousness-type double patenting is less significant in post-URAA patent disputes, we have also recognized its continued importance. […] We now make explicit what was implicit in Gilead: the doctrine of obviousness-type double patenting continues to apply where two patents that claim the same invention have different expiration dates. We hold that Kennedy is not entitled to an extra six years of monopoly solely because it filed a separate application unless the two inventions are patentably distinct.
Id. at *12-13.
[2: ODP and Genus-Species Patent Family] [S]pecies are unpatentable when prior art disclosures describe the genus containing those species such that a person of ordinary skill in the art would be able to envision every member of the class. Here, we think it is clear that a reader of the ’766 patent could have easily envisioned a species limited to sicker patients [because the disclosure of the genus in the ‘766 parent patent relied on a T-14 study that serves as the basis for the species in the ‘422 child patent].
Id. at *24 (text added).
 
 
 
08/22/14
Category: Claim Construction  
 
 
 
By: Roy Rabindranath, Contributor 
 
TitleAugme Tech., Inc. v. Yahoo! Inc. (Fed. Circ. June 20, 2014).
Issue[Whether] the district court's determination [in its summary judgment ruling] that Yahoo!'s accused systems do not infringe the Augme patents either literally or under the doctrine of equivalents [was erroneous].
Augme Tech., at *2 (text added).
Holding[Because the district court correctly concluded that the] plain and ordinary meaning of ["]embedded code["] is code written into the HTML code of the web page [, and not linked to another web page, it properly ruled that Yahoo! 's accused system did not infringe the Augme patent literally or under the doctrine of equivalents].
Id. at *10 (text added). 
 
 
 
08/19/14
Category: Claim Construction 
 
 
 
By: Abby Lin, Contributor 
 
TitleGemalto S.A. v. HTC Corp., No. 13-1397 (Fed. Cir.June 19, 2014).
Issues
1) [Integrated Circuit Claims Claim Construction:] Gemalto first challenges the district court’s construction of the “memory” limitation in the integrated circuit card claims to require all program memory on a single semiconductor substrate (or chip). Gemalto does not dispute that an integrated circuit card is “a card containing a single semiconductor substrate having a central processing unit and memory,” J.A. 31, but contends that the card should be able to access applications stored in off-chip memory, i.e., memory located on chips other than the chip containing the processor.
Gemalto, at *8 (text added).
2) [Programmable Device Claims Claim Construction:] Gemalto asserts that the term should be construed broadly to mean “a device that can execute a computer program.” Appellant’s Br. 37. Gemalto suggests that its proposed construction reflects the ordinary meaning of “programmable device” to one of skill in the art.
Id. at *13.
3) [Infringement by Doctrine of Equivalents:] Gemalto argues that the accused devices infringe the asserted claims, as construed by the district court, under the doctrine of equivalents… Gemalto contends that the accused devices infringe under the doctrine of equivalents when they temporarily load program instructions from off-chip memory into onchip cache memory before execution.
Id. at *17.
Holding
1) [Integrated Circuit Claims Claim Construction:] The claim language does not support Gemalto’s theory. The claim language requires a “memory” that stores an “application” and a “processor” that is coupled to the memory. ’317 patent col. 19 ll. 42, 43, 64. The specification demonstrates that the entire purpose of the invention was to enable the application to be stored within the memory on the chip of the integrated circuit card…. In short, we agree with the district court that the memory recited in the integrated circuit card claims should be construed as “all program memory,” which means “sufficient memory to run the Java code [i.e., the application and interpreter] in accordance with the patentee’sinvention.”
Id. at *8, 13 (text added).
2) [Programmable Device Claims Claim Construction:] In any event, Gemalto’s central problem is that the limitation is not “programmable device” but “memory.” The meaning of terms appearing in the ’727 patent must be construed in light of the same terms recited in the ’317 patent. All three asserted patents are directly related … Statements made by the applicant concerning the “memory” limitation in the ’317 patent’s claims therefore apply with equal force to the “memory” limitation in the ’727 patent’s claims with the same limitation.
Id. at *14 (text added).
We thus agree with the district court that the programmable device of claim 3 of the ’727 patent should be construed as “a single semiconductor substrate integrating electronic circuit components that includes a central processing unit and all program memory making it suitable for use as an embedded system.” J.A. 33.
Id. at *16-17 (text added).
3) [Doctrine of Equivalents.:] Establishing infringement under the doctrine of equivalents requires particularized testimony and linking argument as the equivalence between the claim limitation and the alleged equivalent. Texas Instruments, 90 F.3d at 1567. Such testimony is missing here.
Id. at *19 (text added).
Gemalto provided no testimony asserting that the difference in functionality between cache memory and permanent memory is in fact insubstantial… Absent any testimony suggesting that cache memory is equivalent to permanent memory, no reasonable fact finder could find that the two types of memory function in substantially the same way to achieve substantially similar results
Id. at *19-20 (text added).
 
 
 
08/18/14
Category: Inequitable Conduct 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleApotex Inc. v. UCB, Inc., No. 2013-1674 (Fed. Cir. Aug. 15, 2014).
IssueApotex argues that merely advocating a particular interpretation of the prior art cannot support an inference of deceptive intent [and that there is no duty to disclose an inventor’s own suspicions or beliefs regarding relevant prior art.].
Apotex Inc. at *16 (text added).
HoldingThe district court’s findings regarding materiality and intent are not clearly erroneous, and its ultimate determination that Dr. Sherman [, the sole inventor of the patent at issue,] breached his duty of candor, good faith, and honesty before the PTO was not an abuse of discretion [because Dr. Sherman was aware that prior art, Univasc, was made according to his claimed process, concealed this knowledge from the PTO, and misrepresented the nature of Univasc and other prior art through his counsel’s arguments and Dr. Lipp’s declaration.]
Id. at *12-13 (text added). 
 
 
 
08/15/14
Category: Claim Construction   
 
 
 
 
By: Christian Hannon, Contributor 
 
TitleRotatable Tech. v. Motorola Mobility, No. 2014-1042 (Fed. Cir. June 27, 2014)(non-precedential).
IssueRotatable appeals, among other things, that the preamble term “selectively rotating” is not a claim limitation and that, if the term is a claim limitation, the distrcit court erred in its construction of the term.
Rotatable Tech. at *4.
HoldingBecause the intrinsic record emphasizes the importance of “selectively rotating” and because the prosecution history shows that the patentee relied on the term “selectively rotating” to distinguish the claimed invention from prior art, the district court correctly determined that “selectively rotating” is a claim limitation.
Id. at *2.
 
 
 
08/12/14
Category: Civil Procedure   
 
 
 
 By: John Kirkpatrick, Contributor
 
TitleAbbVie Deutschland GMBH & Co. v. Janssen Biotech, Inc., No. 2013-1338, 1346 (Fed. Cir. July 1, 2014).
Issues
[1] AbbVie argues that Centocor’s [(Jannsen's)] invalidity defenses as to [U.S. Patent 6,914,128] should not have been tried to the jury because of the preclusive effect of the [Board of Patent Appeals and Interferences'] prior judgment.
AbbVie at *14 (text added).
[2] [W]hether the ['128 patent] sufficiently otherwise describe[s] representative species to support the entire genus.
Id. at *22-23 (text added).
[3a] [T]hat the district court’s exclusion of the interference file history from evidence allowed Centocor to relitigate invalidity [for lack of written description support] from a clean slate.
Id. at *28 (text added).
[3b] [T]hat the district court erred in excluding expert testimony on the detailed reasoning of the PTO on the issues of written description, enablement, and obviousness during ex parte prosecution.
Id. at *28 (text added).
[3c] [T]hat the prejudicial effect of the contested evidentiary rulings was exacerbated by the jury instruction that new information presented at trial that was not considered by the PTO would make it easier for Centocor to carry its burden of proving invalidity by clear and convincing evidence.
Id. at *30 (text added).
Holdings
[1] Because a district court can make a de novo determination of facts upon the submission of new evidence, a Board decision that is reviewed under [35 U.S.C. § 146 (2006)] is not a “binding final judgment” to preclude a losing party from litigating the same or related issues in a parallel proceeding.
AbbVie at *16-17 (text added).
[2] [M]erely drawing a fence around a perceived genus is not a description of the genus. One needs to show that one has truly invented the genus, i.e., that one has conceived and described sufficient representative species encompassing the breadth of the genus.
Id. at *23 (text added).
[3a] [W]e need only address whether the evidentiary rulings affected AbbVie’s substantive rights concerning [the verdict for lack of written description support]. The evidence of the interference or other proffered evidence concerning obviousness is of little probative value to the written description determination.
Id. at *28 (text added).
[3b] In view of the record as a whole, including the substantial evidence of structural differences between Stelara [(the alleged infringing drug patented by Centocor)] and the antibodies [of AbbVie's patents] and the fact that the jury considered the number of structurally similar antibodies disclosed in AbbVie’s patents, [...] the district court did not abuse its discretion in excluding [testimony that the PTO concluded that the written description requirement was met.]
Id. at *30 (text added, internal citations removed).
[3c] “[I]f the PTO did not have all material facts before it, its considered judgment may lose significant force” and that “the challenger’s burden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain.” [...] "[T]he jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence."
Id. at *32 (text added, quoting Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238, 2251 (2011)).
 
 
 
08/10/14
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleScriptro, LLC v. Innovation Asso., Inc., No. 2013-1561 (Fed. Cir. Aug. 6, 2014).
IssueWe have a narrow issue: whether the absence of sensors from the claims at issue means that those claims are unsupported by the written description as a matter of law [in a summary judgement motion].
Scriptro, LLC at *7 (text added).
Holding[T]he specification itself creates a genuine issue of material fact on this question [that would necessitate denial of summary judgment]: a trier of fact could find that a skilled artisan would understand the specification to disclose a system that relies on the computer memory, without sensors, to fulfill the central purpose of keeping track of slot use by particular customers and slot availability, with sensors optionally providing confirmation only.
Id. at *11(text added).
 
 
 
08/08/14
Category: Civil Procedure   
 
 
 
 By: Christian Hannon, Contributor 
 
TitleIn re Nintendo of Am., No. 2014-132 (Fed. Cir. June 24, 2014).
Issue[Did] [t]he distrcit court [correctly] den[y] the motion of Nintendo and the [eleven retailer defendants (the "Retailers")] to sever and stay the claims against the Retailers, and transfer the separated action against Nintendo to the Western District of Washington.
In re Nintendo of Am., at *2 (text added).
HoldingThe benefits of trying the case against Nintendo in the Western District of Washington are indisputable. We conclude that the district court should have exercised its discretion to grant the petition.
Id. at *6. 
 
 
08/06/14

Category: Civil Procedure  

  

 By: Eric Paul Smith, Contributor

TitleMicrosoft Corp. v. DataTern, Inc., No. 2013-1184 (Fed. Cir. May 5, 2014).
Issue
[1] Whether "the district court had jurisdiction over . . . Microsoft's and SAP's declaratory judgment challenges to [U.S. Patent Nos. 5,937,402 and 6,101,502]."
Microsoft Corp., at *3.
[2] Whether the district court properly construed "the scope of the . . . summary judgment grant to SAP."
Id. at *3.
[3] Whether "the district court's grant of summary judgment that certain [Microsoft] and [SAP] products do not infringe [the '402 and '502 patents]" was proper.
Id. at *2-3.
Holding
"[T]he district court had jurisdiction over both Microsoft and SAP's declaratory judgment challenges to the '502 patent and over SAP's challenge to the '402 patent, but not over Microsoft's challenge to [the] '402 patent."
Id. at *3.
"[T]he district court erred in granting summary judgement of noninfringement to SAP for products other than BusinessObjects."
Id. at *21.
"[W]e affirm summary judgment of SAP's noninfringement of the '502 patent," id. at *18; "we affirm the district court's grant of summary judgment of noninfringement of the '502 patent to Microsoft," id. at *19; "we deny Microsoft’s declaratory judgment challenge to the ’402 patent on jurisdictional grounds and . . . our grant of summary judgment of noninfringement to SAP with regard to the ’402 patent does not require consideration of any claim construction issues, [therefore] we do not reach any of the ’402 patent claim construction issues in the Microsoft appeal," id. at 23 n.8.

 

 

08/04/14
Category: Claim Construction  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
Title Amdocs, Ltd. v. Openet Telecom, Inc., No. 2013-1212 (Fed. Cir. Aug. 1, 2014).
Issues
[1] [A]ll asserted claims of the ’065 Patent require the use of accounting information to “enhance” a network accounting record. The district court construed “enhance” to mean “to apply a number of field enhancements in a distributed fashion.” […] [2] Third, common to all asserted ’797 Patent claims is the limitation of “single record represent[ing] each of the plurality of services.” The district court construed the term to mean “one record that includes customer usage data for each of the plurality of services used by the customer on the network,” with the understanding that the term does not encompass a record that aggregates usage data. […]
Amdocs, Ltd., *17-18 (text added, internal citations omitted).
[3] Based upon its decision that enhancement occurs “in a distributed fashion” and “close to the source” of the network account information, the district court determined that there was “no evidence” of infringement and granted summary judgment in Openet’s favor.
Id. at *23.
Holdings
[1] The district court properly concluded that the embodiments define the outer limits of the claim term and did not err in reading the “in a distributed fashion” and the “close to the source” of network information requirements into the term “enhance.” We therefore affirm the district court’s construction of “enhance” as “to apply a number of field enhancements in a distributed fashion.”
Id. at *21.
[2] Because the specification shows that the separate record can represent a plurality of records by aggregation, the ordinary artisan would also understand that a separate record can represent a plurality of services by aggregation. Accordingly, we vacate the district court’s construction of “single record represent[ing] each of the plurality of services” and substitute it with a plain mean- ing interpretation.
Id. at *23.
[3] We hold that Amdocs’ documentary evidence describing the structure and operation of the accused products creates genuine factual issues regarding whether the products enhance “in a distributed fashion” “close to the source” of the network information.
Id. at *23.
 
 
 
08/02/14
Category: Damages   
 
 
 
By: Karthik Subramanian, Contributor 
 
TitleCartner v. Alamo Group, Inc., No. 2013-1293, 1314 (Fed. Cir. April 11, 2014) (non-precedential).
Issues"[1] Cartner argues its infringement contentions were objectively reasonable and that the district court clearly erred in finding the case exceptional. [2] Alamo cross appeals the attorney fees award, contending Cartner’s infringement arguments became frivolous long before this court’s invalidity decision, and arguing the fee award should be calculated from an earlier date.”
Cartner, at *8 (text added).
Holdings"[1] Because the district court properly found this case exceptional [in light of Cartner’s frivolous infringement arguments and his bad faith conduct regarding equivalents], and [2] because it did not abuse its discretion in determining the fee award [by selecting one date applicable to all accused products], this court affirms.”
Id. at *2 (text added).
 
 
 
07/31/14
 
 
 
 By: Roy Rabindranath, Contributor
 
TitleBraintree Lab., Inc. v. Novel Lab., Inc. (Fed. Circ. April 22, 2014).
Issues
[1] [Whether the district court erred in construing the limitations of U.S. Patent 6,946,149 (a)] "purgation" to mean "an evacuation of a copious amount of stool from the bowels after oral administration of the solution [....and (b)] "clinically significant electrolyte shifts" to require "alterations in blood chemistry that are outside the normal upper or lower limits of their normal range and other untoward effects.
Braintree Lab., at *5, 8 (text added, internal citations omitted).
[2] [Whether] the district court's grant of summary judgment of infringement [, based on the above claim construction, in favor of Braintree was erroneous].
Id. at *12 (text added).
[3] [Whether] the district court [erred in finding] that [the] Hechtor [reference] does not anticipate the asserted claims of the '149 patent....[and] in finding that Novel failed to demonstrate that the asserted claims of the '149 patent would have been obvious at the time of the invention.
Id. at *14, 16 (text added).
Holdings
[1(a)] In construing claim terms, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to "particularly point out and distinctly claim the subject matter which the patentee regards as his invention." The asserted claims here only require that the compositions "induce" (i.e., bring about or start) diarrhea. The claims do not contain language that requires achieving a fully cleansed colon for a colonoscopy. Thus, while cleansing the goal specifically articulated in the composition, it is not a claim requirement.
Braintree Lab., at *6-7 (text added, internal citations omitted).
[1(b)] Under our precedent, the patentee's lexicography must govern the claim construction analysis. We reverse the district court's claim construction and construe "clinically significant electrolyte shifts" to be "alterations in blood chemistry that are outside the normal upper or lower limits of their normal range or other untoward effects.
Id. at *9 (text added, internal citations omitted).
[2] [We] conclude that there remains a genuine dispute as to whether SUPREP avoids producing any clinically signficant electrolyte shifts in a patient populuation. We vacate the district court's grant of summary judgment of infringement, and we remand this matter to the district court for further factual findings concerning whether such alterations qualify as "clinically significant electrolyte shifts" in accordance with the proper claim construciton articulated here within.
Id. at *12 (text added).
[3] "Novel 'did not show proof that met the clear and convincing standard' that the asserted claims were ancticipated by the Hechter [reference]." Id. at *13 (text added, internal citations omitted). "[Moreover, as] the district court correctly noted, Novel did not prove that one of skill in the art would have been motiviated to combine [16] references. In other words, it failed to prove a 'plausible rationale as to why the prior art references would have worked together.'" Id. at *15-16 (text added).   

 
07/29/14
Category: Civil Procedure   
 
 
 
 By: Abby Lin, Contributor 
 
CaseSource Vagabond Sys. Ltd. v. Hydrapak, Inc., No. 2013-1270, -1387 (Fed. Cir. June 5, 2014).
IssuesSource Vagabond Systems, Ltd., Pearl Cohen Zedek Latzer LLP, Guy Yonay, and Clyde Shuman (collectively, “Source” or “Appellants”) appeal the decision of the district court sanctioning Source under Federal Rule of Civil Procedure 11 (“Rule 11”) for bringing a frivolous patent infringement suit against Hydrapak, Inc. (“Hydrapak”) [based on [1] an unsupported proposed claim construction and [2] a literal infringement allegation lacking any evidentiary support.]
Source Vagabond Sys. Ltd. at *2 (text added).
Holdings
[1] Source was required to “perform an objective evaluation of the claim terms” to satisfy its obligation to conduct a reasonable pre-suit evaluation. [...] By proposing a definition that ignores the canons of claim construction, Source did not meet that standard. The district court did not abuse its discretion in imposing Rule 11(b)(2) sanctions based upon Source’s frivolous claim construction arguments.
Id. at *15-16 (internal citations omitted).
[2] Since Source’s claim construction is […] inadequate, and, indeed, the literal infringement claim “lacked evidentiary support no matter how the claim was construed,” […], the district court did not abuse its discretion in imposing Rule 11 sanctions.
Id. at *17.
 
07/28/14
Category: Injunctions 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleePlus, Inc. v. Lawson Software, Inc., No. 2013-1506, -1587 (July 25, 2014).
IssuesThis case raises two issues. [1: Injunction] The first is whether an injunction can continue after the PTO has cancelled the only claim on which the injunction was based. [2: Civil Contempt Remedies] The second is whether civil contempt remedies based on the violation of an injunction are appropriate when the injunction has been overturned on direct appeal.
ePlus, Inc. at *3.
Holdings
[1: Injunction] Under these authorities, there is no longer any legal basis to enjoin Lawson’s conduct based on rights that claim 26 of the ’683 patent previously conferred as those rights have ceased to exist. The PTO found claim 26 invalid, we affirmed that decision, our mandate issued, and the PTO cancelled the claim. Claim 26 no longer confers any rights that support an injunction against infringement.
Id. at *11.
[2: Civil Contempt Remedies] We conclude that the compensatory award for the violation of the injunction must be set aside in light of the cancellation of claim 26 [because the modified injunction was not final].
Id. at *18 (text added).
 
 
07/25/14
Category: 103 
 
 
 
 By: Christian Hannon, Contributor 
 
TitleSTC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. June 6, 2014).
Issue[Whether] Sandia can[] be involuntarily joined under Federal Rule of Civil Procedure 19 [to allow STC to assert the '998 patent against Intel].
STC.UNM at *2 (text added).
Holding[T]his court holds that the right of a patent co-owner to impede an infringement suit brought by another co-owner is a substantive right that trumps the procedural rule for involuntary joinder under Rule 19(a).
Id. at *11.
 
07/23/14
Category: 102  
 
 
 
 By: John Kirkpatrick, Contributor 
TitleSuffolk Tech., LLC v. AOL, Inc., No. 13-1392 (Fed. Cir. May 27, 2014).
Issues
[1a] Suffolk argues that the district court erred in construing the claim term “generating said supplied file” [as recited in dependent claim 6] as “creating or tailoring a file, as distinct from selecting an existing file, in dependence upon the received identification signal.” Suffolk’s position is that the generated file could depend on the content of the requesting web page and not just the received identification signal.
Suffolk Tech. at *6 (text added, internal citation and emphasis removed).
[1b] Suffolk argues that the specification implicitly defines “generating said supplied file” [as depending on the content of the requesting page] and that the district court erred in ignoring that implicit definition.
Id. at *7 (text added).
[1c] Suffolk argues that the district court’s construction effectively excludes the preferred embodiment that this claim language was intended to cover.
Id. at *8.
[2a] According to Suffolk, [a Usenet Post is not prior art because] the Post’s audience was not those of ordinary skill in the art and locating the Post would be too difficult.
Id. at *10 (text aded).
[2b] [S]erious questions undermining the reliability and accuracy of the Post should have been submitted to the jury.”
Id. at *12 (text added).
[2c] [T]he district court improperly excluded testimony from [Suffolk's] validity expert.
Id. at *13 (text added).
[2d] According to Suffolk, there are genuine factual issues concerning whether the Post disclosed every limitation in the contested claims.
Id. at *15.
Holdings
[1a] [T]he undisputed construction of “identification signal”—“digital information that identifies the source, origin, or location of a file”—says nothing about the content of the requesting page.
Suffolk Tech. at *6 (text added, emphasis removed).
[1b] [T]he specification, when viewed in context, supports the district court’s construction that “generating said supplied file” depends on the received identification signal and not the content of the requesting web page.
Id. at *8 (text added).
[1c] [The preferred embodiment is not excluded] when the entire description of the preferred embodiment is considered.
Id. (text added).
[2a] [T]he record indicates that those of ordinary skill in the art actually [at the time] were using such newsgroups [and] a printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.
Id. at *10-11 (text added, internal citation removed).
[2b] [T]he asserted evidentiary weaknesses in the Post are insufficient, without more, to create a genuine issue of material fact.
Id. at *13 (text added).
[2c] [T]he district court did not abuse its discretion in [excluding testimony when the expert goes from having no opinion concerning a claim to having an opinion because the expert] did opine on the validity of dependent claim 6 in his initial report and the district court’s construction did not vary greatly from the parties’ proposals.
Id. at *14 (text added).
[2d] Google bears the burden to show that there are no genuine issues of material fact. It has met that burden. And Suffolk’s attorney arguments, with no affirmative evidence, are insufficient to undermine Google’s showing.
Id. at *15.  
 
 
07/21/14
Category: Civil Procedure    
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleArlington Ind., Inc. v. Bridgeport Fittings, Inc., No. 2013-1357 (Fed. Cir. July 17, 2014).
IssueBridgeport argues that we have jurisdiction over its appeal [for contempt of an injunction] under both § 1292(c)(1) and § 1292(c)(2).
Arlington Ind., Inc. at *5.
HoldingBecause the district court’s order simply interpreted the 2004 Injunction and is not an otherwise final, appealable judgment, we dismiss the appeal for lack of jurisdiction.
Id. at *5.
 
07/19/14
Category: Post-Grant Proceedings  
 
 
 
 By: Karthik Subramanian, Contributor 
 
TitleIn re Bd. of Tr. of the Univ. of Ill., No. 2014-122 (Fed. Cir. May 5, 2015) (non-precedential).
Issue“The Board of Trustees for the University of Illinois (“University”) petitions for a writ of mandamus directing the United States Patent and Trademark Office (“PTO”) and its Patent Trial and Appeal Board (“Board”) to withdraw its orders instituting inter partes review in cases IPR2013-401 and IPR2013-404.”
In re Bd. of Tr. of the Univ. of Ill. at *1.
Holding“The petition is denied [because a party seeking issuance of a writ to vacate an inter partes review cannot establish a clear and indisputable right to relief].”
Id. at 3 (text added).
 
 
07/16/14
Category: 101   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleDigitech Image Tech., LLC v. Electronics for Imaging, Inc., No. 2013-1600, -1601, -1602, -1603, -1604, -1605, -1606, -1607, -1608, -1609, -1610, -1611, -1612, -1613, -1614, -1615, -1616, -1617, -1618 (Fed. Cir. July 11, 2014).
Issues[1] First, Digitech asserts that the district court erred in finding that the device profile claims are directed to a collection of data that lacks tangible or physical properties. [2] Second, Digitech argues that the district court erred in finding that the asserted method claims encompass an abstract idea and are not tied to a specific machine or apparatus.
Digitech Image Tech., LLC at *6 (text added).
Holdings
[1] We […] hold that the device profile claims of the ’415 patent do not encompass eligible subject matter as required by section 101 and are therefore not patent eligible [because the claimed “device profile” is a collection of intangible color and spatial information, and there is nothing in the claims that require said information to be in a tangible medium].
Id. at *10.
[2] [W]e hold that the process described in the asserted claims is directed to an abstract idea and is not patent eligible under section 101 [because the claims recite an abstract process of gathering and combining data that does not require input from a physical device].
Id. at *13.
 
 
07/15/14
Category: Claim Construction  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleGolden Bridge Tech., Inc. v. Apple Inc., No. 2013-1496 (Fed. Cir. July 14, 2014).
Issues
[1: Claim Construction] GBT disputes the portion of the district court’s construction requiring that the preamble be spread prior to transmission. It argues that […] It argues that its submission of its stipulated construction to the PTO in an IDS does not constitute a disclaimer of the broader claim scope.
Golden Bridge Tech., Inc. at *6.
[2: Waiver of Alternate Arguments] GBT also argues that the district court erred by declining to modify its judgment of noninfringement on reconsideration. GBT’s argument is two-fold. [...] [I]t contends that it did not waive its signature sequence infringement theory because that theory was not introduced for the first time in its motion for reconsideration.
Id. at *12.
Holdings
[1: Claim Construction] We conclude that GBT’s submissions during prosecution of its stipulated construction for the term preamble constitute disclaimer. Although we generally construe terms according to their plain and ordinary meanings to one of ordinary skill in the art, we depart from that meaning where there is disclaimer. […] Here, GBT clearly and unmistakably limited the term preamble to “a signal used for communicating with the base station that is spread before transmission[,]” [during reexamination of the ’267 patent and prosecution of the ’427 patent].
Id. at *6 (text added).
[2: Waiver of Alternate Arguments] We conclude that GBT’s signature sequence infringe- ment theory was raised for the first time in its motion for reconsideration. Prior to its motion for reconsideration, GBT did not argue that the signature sequence alone in the accused device was itself a preamble, but instead that the PRACH preamble met the preamble limitations in the claims.
Id. at *13.
 
 
07/15/14
Category: 102   
 
 
 
 By: Christian Hannon, Contributor  
TitleIn re Reijers, No. 2014-1052 (Fed. Cir. June 5, 2014) (non-precedential).
Issue[Whether] Braun [] disclose[s] a method for blowing liquid from a food product, as required by Claim 11.
In re Reijers at *5 (text added).
HoldingBecause substantial evidence supports the Board’s conclusion that Braun anticipates Claim 11 [because based on inherency, the device in Braun would necessarily blow liquid off a food product as part of its drying process].
Id. at *2 (text added).
 
07/12/14
Category: Civil Procedure   
 
 
 
  By: John Kirkpatrick, Contributor
 
TitleKrauser v. BioHorizons, Inc., No. 2013-1461 (Fed. Cir. June 4, 2014).
Issues
[1] [Does] Krauser’s complaint [raise] a substantial patent law issue [that requires the Federal Circuit to accept a transfer from a sister circuit, according to the following theories?]
Krauser at *7 (text added).
[1a] Krauser’s original complaint contained a patent law claim of inventorship.
Id. (text added).
[1b] [T]he well-pleaded complaint rule requires [the Federal Circuit] to consider the issue of patent law inventorship even when adjudicating Krauser’s claims of ownership [based on past agreements] and a quantum meruit theory.
Id. at *10 (text added).
[1c] [E]ven if Krauser’s [ownership] claims are based in state law, there is federal jurisdiction because Krauser seeks remedies that might be preempted by federal patent law.
Id. at *11 (text added).
[2] [E]ven if [the above theories are] ultimately incorrect, [the theories] are nonetheless “plausible” and require [the Federal Circuit] to follow the law of the case of [the] sister circuit.
Id. at *8 (text added).
Holdings
[1a] We have repeatedly held that an amendment to the complaint that dismisses the patent law claims without prejudice, as here, deprives this court of jurisdiction over the case. Krauser at *10 (internal citation removed).
[1b] The resolution of the inventorship question is neither “necessary” nor “substantial” to the case.
Id. at *11.
[1c] [In an analogous situation, we found no] federal jurisdiction where plaintiff “[sought] remedies that might be preempted by federal patent law” because federal preemption was only a defense to the plaintiff’s suit.
Id. at *12 (text added, internal citation removed).
[2] [The Supreme Court] held that a transferee court would “not exceed its power in revisiting the jurisdictional issue, and once it conclude[s] that the prior decision was ‘clearly wrong’ it [is] obliged to decline jurisdiction.”
Id. at *8 (text added, internal citation removed).
 
 
 
07/10/14
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleStauffer v. Brooks. Bros. Group, No. 2013-1180 (Fed. Cir. July 10, 2014).
IssueAfter the AIA became law and eliminated the qui tam provision of the false-marking statute, Mr. Stauffer acknowledged that he no longer had standing to pursue his lawsuit [which was initially brought prior to enactment of the AIA]. The district court subsequently issued an order directing him to show cause why, in light of the AIA, his suit should not be dismissed for lack of standing. Mr. Stauffer responded by arguing that the AIA amendments were unconstitutional because [1] they amounted to a pardon by Congress, thus violating the doctrine of separation of powers. He also argued [2] that, by making the elimination of the qui tam provision applicable to pending suits, the statute violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced.
Stauffer at *3 (text added).
Holding
[1] We […] conclude that the AIA amendment to the false-marking statute that eliminated liability for expired patents does not constitute an impermissible pardon [because the amendments amount to a repeal of a law, and not an attempt to set aside an already adjudicated punishment].
Id. at *11-12.
[2] [W]e conclude that the AIA amendments do not violate the common-law principle on which Mr. Stauffer relies because (1) he has no vested rights in his lawsuit, and (2) the AIA amendments do not constitute a pardon.
Id. at *12.
 

 
07/08/14
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleX2Y Attenuators, LLC v. ITC, No. 2013-1340 (Fed. Cir. July 7, 2014).
IssueX2Y contends that the ITC improperly read several functional and structural limitations into the meaning of the term “electrode[“ based on statement on parent patents.] It contends that the plain meaning of “electrode” denotes a single conductor rather than three conductors, let alone a three-conductor sandwich structure having paired electromagnetically opposite conductors flanking the central conductor.
X2Y Attenuators, LLC at *6 (text added).
HoldingWe conclude that the ITC correctly construed the electrode terms. The patents’ statements that the presence of a common conductive pathway electrode positioned between paired electromagnetically opposite
Id. at *7.
 
 
 
 
07/05/14
Category: Injunctions  
 
 
 
By: Samuel Dillon, Contributor 
 
TitleTrebro Mfg., Inc. v. Firefly Equip., LLC, No. 2013-1437 (Fed. Cir. April 9, 2014).
Issues[Whether, in denying a motion for preliminary injunction,] the district court erred in determining that [(1)] Trebro failed to prove a likelihood that FireFly infringes the ’638 patent, that [(2)] FireFly raised a substantial question of the ’638 patent’s validity, and that [(3)] Trebro failed to prove a likelihood of irreparable harm.
Trebro Mfg., Inc. at *10 (text added).
Holdings
[1] Likelihood of InfringementThe only basis on which the district court found no likelihood of success was the erroneous requirement that a bed frame be moved vertically. Absent an explicit claim construction favorable to FireFly (which, of course, does not include a “bed frame”), this court holds that the district court erred.
Id. at *14.
[2] Substantial Question of Validity[T]he record does not contain a single prior art reference that raises a substantial question as to the ’638 patent’s validity. Without even a reference to call validity into question, the district court abused its discretion in concluding there was no likelihood of success on the merits on the basis of validity.
Id. at *16.
[3] Likelihood of Irreparable HarmThe district court clearly erred in finding as speculative the harm Trebro is likely to suffer if its direct competitor is able to sell an infringing product in the small, niche sod harvester market . . . Further, the district court committed legal error by giving no weight to Trebro’s evidence of likely loss of market share and customers.
Id. at *16.
 
 
07/02/14
The Editors, Administrative Staff and Board of Governors are pleased to announce the newest issue of the Journal of the Patent and Trademark Office Society.
  • The Patentability Of Human Embryonic Stem Cells In Light Of Myriad Brandon Smith
  • A Patent Problem: Can Chinese Courts Compare with the U.S. in Providing Patent Holders with Adequate Monetary Damages Yieyie Yang
  • Process Stories: Patenting Natural Law Processes under Prometheus - How Much Addition to a Patent Claim is Enough? Arun Mohan
  • Eligibility Of DNA and cDNA Daniel Leo
  • A Slippery Slope: The Future of Patents from Government-Funded R&D Tanya S. Gillis
  • Private Industry's Impact on U.S. Trade Law and International Intellectual Property Law: A Study of Post-TRIPS U.S. Bilateral Agreements and the Capture of the USTR Katrina Moberg
  • “The Knockoff Economy: How Imitation Sparks Innovation” by Kal Raustiala and Christopher Sprigman (Oxford University Press, 2012) Book Review by Lynn Bristol
  • Frederico and Rossman Awards Eric Keasel, Committee Chairman
07/02/14
Category: Civil Procedure   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleMadstad Eng'g., Inc. v. U.S. Patent and Trademark Office, No. 2013-1511, 1512 (Fed. Cir. July 1, 2014).
Issues
[1: Jurisdiction] Because MadStad does not assert a claim under the AIA and, instead asserts a claim directly under the constitution challenging the AIA’s constitutionality, we must determine whether MadStad’s claims “arise under” an Act of Congress relating to patents as that jurisdictional principle has been interpreted by the United States Supreme Court.
Madstad Eng., Inc. at *5.
[2: Standing] MadStad contends that the district court’s reliance on Clapper was misplaced because the threats of harm upon which it relies are far less speculative than those asserted in Clapper. It also asserts that it faces a sufficient “substantial risk” of suffering the injuries it identifies to satisfy Article III standing under traditional standing principles which the Clapper Court did not expressly reject.
Id. at *12.
Holdings
[1: Jurisdiction] [W]e find, as we did impliedly in Patlex, that MadStad’s claims and this appeal “arise under” an Act of Congress relating to patents within the meaning of both 28 U.S.C. §§ 1338 and 1295(a)(1) [because assessing the use and scope of the term ‘inventor’ in the Constitution and the AIA is within the CAFC’s domain] and that we, thus, may properly exercise jurisdiction over this appeal.
Id. at *8-9 (text added).
[2: Standing] [W]e hold that the district court did not err by relying on Clapper or concluding that MadStad lacked standing to assert the constitutional claims in its complaint [because there is no evidence of a likelihood that any of the alleged harms are specifically attributable to the AIA, the alleged harms including: computer hacking, time and effort to file additional patent applications, competitive disadvantage, of lost business].
Id. at *27 (text added).
 
 
 
 
 
06/30/14
Category: 103 
 
 
 
By: Roy Rabindranath, Contributor
 
TitleK-Swiss, Inc. v. Glide N Lock GMBH, 2013-1316, -1317 (Fed. Circ. April 23, 2014) (non-precedential)
Issues
[1a] On Clouds argues that the Board’s decision that Szentes anticipates claims 1 and 9 is not supported by substantial evidence because Szentes does not disclose the limitation in the first, unloaded configuration—the resilient member that elastically absorbs oblique shoe loads using the relative motion between the upper and lower layers.
K-Swiss, Inc. at *7.
[1b] On Clouds argues that substantial evidence does not support the Board’s conclusion that Okabe anticipates claim 1 because Okabe does not meet the limitation in the second configuration (the loaded state) that the upper and lower layer of the resilient member engage to “substantially prevent” relative motion.
Id. at *9.
[2a] [Whether] a person having ordinary skill in the art would not have combined Szentes with any of [the prior art] references because Szentes disparaged the use of small channels like those in Pagani, Takahashi and Inohara.
Id. at *11 (text added).
[2b] As for claims 6 and 7, which specify the percentage the outsole deforms in the loaded position, the specific percentages are not explicitly disclosed in Pagani, Takahashi or Inohara [but are nonetheless rejected by combining these references with Szentes].
Id. at *12 (text added).
Holdings
[1a] Because the Szentes sole is made of an elastically resilient material, it absorbs oblique shoe loads in the unloaded state, the first configuration, through the movement of the elastic materials.
Id. at *7.
[1b] Okabe teaches that rubber pins would frictionally engage with the upper layer in the loaded state, thereby preventing relative motion between the two layers.
Id. at *9.
[2a] Szentes does not disparage the use of small channels, but uses them as another example of the floating problem that [Szentes] was attempting to solve-"[an outsole with multiple small cavities] shows the same deficiencies [] as the previous one [i.e., a large hallow cavity], weaing results in an unsure and wobbling walk."[...]Id., at *11 (internal citations omitted).
[2b] [W]e find that substantial evidence does not support the Board’s finding that claims 6 and 7 would not have been prima facie obvious in light of Szentes, Pagani, Takahashi, or Inohara [because the (i) percentages are inherent in the prior art, and (ii) because it is not inventive to discover the optimum or workable ranges by routine experimentation.]
Id. at *14 (text added).
 
 
06/29/14
Category: Claim Construction  
 
 
 
By: Christian Hannon, Contributor 
 
TitleGE Lighting Solutions, LLC v. Agilight, Inc., No. 2013-1267 (Fed. Cir. May 1, 2014).
IssueGE Lighting Solutions, LLC (GE) appeals from the district court's grant of summary judgment that AgiLight, Inc.'s (AgiLight) accused products and processes do not infringe asserted claims of GE's U.S. Patent Nos. [A] 7,160,140 [the '140 Patent] [and] 7,520,771 [the '771 Patent] [based on a construction of "IDC connector"], [B] 7,832,896 [the '896 Patent] [based on a construction of "substantially ellipsoidal"] and [C] 7,633,055 [the '055 Patent] [based on a construction of "annular gasket"].
GE Lighting Solutions, LLC at *2 (text added).
HoldingWe reverse the grant of summary judgment with regard to the '140, '771 and '896 patents and remand [because [A] the district court's construction of "IDC connector" departed from its plain and ordinary meaning without being necessitated by the intrinsic recor, and [B] the district court's construction of "substantially ellipsoidal" would exclude an actual example embodiment is the specification]. [C] We affirm the grant of summary judgment with regard to the '055 patent [because the district court's construction of "annular gasket" was consistent with its plain and ordinary meaning].
Id. (text added).
 
 
 
 
06/25/14
Category: Copyright
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleAm. Broad. Co. v. Aereo, Inc., No. 13-461 (June 25, 2014).
IssueWe must decide whether respondent Aereo, Inc., infringes [the] exclusive right [to transmit or otherwise communicate a performance of a copyrighted work to the public] by selling its subscribers a technologically complex service that allows them to watch television programs over the Internet at about the same time as the programs are broadcast over the air. 
Am. Broad. Co. at *1 (text added).
Holding[H]aving considered the details of Aereo’s practices, we find them highly similar to those of the CATV systems in Fortnightly and Teleprompter. And those are activities that the 1976 amendments sought to bring within the scope of the Copyright Act. Insofar as there are differences, those differences concern not the nature of the service that Aereo provides so much as the technological manner in which it provides the service. We conclude that those differences are not adequate to place Aereo’s activities outside the scope of the Act. For these reasons, we conclude that Aereo “perform[s]” petitioners’ copyrighted works “publicly,” as those terms are defined by the Transmit Clause.
Id. at *17-18.
 
 

 
Editor Comments
For further insight, check out the Audio Brief of oral arguments in Am. Broad. Co. v. Aereo, Inc. by clicking here.
  
 
06/23/14
Category: Claim Construction  
 
 
 
By: John Kirkpatrick, Contributor  
 
TitleHowlink Global LLC v. Network Comm., No. 2013-1181 (Fed. Cir. April 2, 2014)(non-precedential).
IssueHowLink challenges the construction of two terms: (1) “temporarily transmitting voice of a caller to the called terminal to identify the caller when the second communication link is established,” and (2) “prohibiting voice transmission until a collect call acceptance arrives after the temporary voice transmission.” The dispute over these claims is about whether the claims of the [U.S. Patent No. 7,876,744 B2] patent require that a caller be able to talk to the called party temporarily before a decision to accept the collect call is made.
Howlink Global LLC at *2 (text added).
HoldingConsistent with the claim language, the description of the embodiments points to a construction where “transmitting the voice of a caller” requires a “live” voice.
Id. at *15.
 
 
 
06/22/14
Category: Post-Grant Proceedings    
 
 
 
 By: Eric Paul Smith, Contributor 
 
TitleIn re The Proctor & Gamble Co., Misc. Docket No. 121 (Fed. Cir. Apr. 24, 2014).
IssueWhether "a decision by the Director [of the United States Patent & Trademark Office ('USPTO')] to institute inter partes review[s]" of the patents at issue "may [] be directly reviewed by this court through the extraordinary means of mandamus."
In re The Proctor & Gamble Co. at *2 (emphasis removed from original).
Holding"We conclude that immediate review of such a decision is not available in this court. We therefore deny P&G’s petition for mandamus relief."
Id. at *2.
 
 
 
06/19/14
Category: 101  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleAlice Corp. v. CLS Bank Int., No. 13-298 (June 19, 2014).
IssueThe patents at issue in this case disclose a computer- implemented scheme for mitigating “settlement risk” (i.e., the risk that only one party to a financial transaction will pay what it owes) by using a third-party intermediary. The question presented is whether these claims are patent eligible under 35 U. S. C. §101, or are instead drawn to a patent-ineligible abstract idea.
Alice Corp. at *1.
HoldingWe hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention. We therefore affirm the judgment of the United States Court of Appeals for the Federal Circuit.
Id. at *1.
 
 
 
 
Editor Comment
For further insight, check out the Audio Brief of oral arguments in Alice Corp. v. CLS Bank Int. by clicking here.
 
06/19/14
Category: Administrative Law 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleQ.I. Press Controls, B.V. v. Lee, No. 2012-1630, -1631 (Fed. Cir. June 9, 2014).
Issues
[1: Obviousness Rejection of Claims 61-72] Quad/Tech argues that the Board erred in rejecting claims 61–72 for obviousness over Ross and Sainio by using hindsight bias to combine the two references […] [and] that Ross and Sainio cannot be combined because the circular lighting configuration of Ross does not teach a high intensity illumination system […]
Q.I. Press Controls, B.V. at *11.
[2: Contradictory 103 Rejection Regarding Claims 1-60] Q.I. Press asserts that the Board’s decision is inherently contradictory, finding that claims 1–60 would not have been obvious because Maruyama and Ross do not disclose a printing press, but also finding that the similar claims 61–72 would have been obvious over a combination of the printing press in Sainio and Ross.
Id. at *16.
Holdings
[1: Obviousness Rejection of Claims 61-72] [C]ombining Ross and Sainio would have been obvious to one having skill in the art at the time of the invention [because the claim language at issue is broad and the asserted combination would give the predictable result of greater degree of illumination].
Id. at *12 (text added).
[2: Contradictory 103 Rejections] [W]hen all [the] references were before the Board, and this court, an obligation is owed to the public not to permit inconsistent results when a proper challenge to that inconsistency is made on appeal. The Board should have observed the similarities between the claims, noted those similarities between the claims and the references before the Board on appeal, analyzed whether the combination of Sainio and Ross would have rendered claims 1–60 obvious, and if so, issued a new ground of rejection.
Id. at *19.
 
 
 
06/18/14
Category: 112 - Means Plus   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleTriton Tech. of Tex., LLC v. Nintendo of Am., No. 2013-1476 (Fed. Cir. June 13, 2014).
IssueEach asserted claim [in the ‘181 patent] recites an “integrator means.” The district court held that this term rendered the asserted claims indefinite [because the ’181 patent broadly discloses using “numerical integration,” without specifying a class of algorithms that can be used to calculate definite integrals].
Triton Tech. of Tex., LLC at *3 (text added).
HoldingWe affirm the district court’s determination that the asserted claims of the ’181 patent are indefinite because the specification does not disclose an algorithm for performing the claimed integrating function of the “integrator means.”
Id. at *6.
 
 
 
06/17/14
Category: Licensing 
 
 
 
By: Abby Lin, Contributor 
 
TitleEndo Pharma. Inc. v. Actavis, Inc., No. 20130-1628, -1662 (Fed. Cir. March 31, 2014).
Issues
[1: Express License] Endo contends that the plain language of the agreements, which limit “Licensed Patents” to several enumerated patents and applications claiming priority to them, does not grant Appellees an express license to practice the asserted patents [US 8,309,122(‘122), US 8,329,216(‘216), US 7,851,482(‘482)] [which are not listed on the agreement, but claim priority to enumerated patents in the agreement]. It argues that the “No Implied Rights” provision further makes clear that the agreements do not cover the asserted patents.
Endo Pharma. Inc., at *6 (text added).
[2: Implied License and 3: Injunction / Estoppel] Endo contends that the plain language of the Endo argues that the district court legally erred in concluding the Appellees are impliedly licensed to practice the asserted patents due to legal estoppel.
Id. at *10.
Holdings
[1: Express License] The ’216 and ’122 patents do not cross-reference the applications that issued as any of the licensed patents. Therefore, it is quite clear that the ’122 and ’216 patents do not “claim priority to” any of the licensed patents [...] There is no reading of [the Roxane and Actavis contract] language that extends coverage to patents that merely have a provisional application in common with the licensed patents [...]. Finally, the ’482 patent is completely unrelated to any of the previously licensed patents, and is likewise not covered by the agreement.
Id. at *8-9.
[2: Implied License] “Appellees seek to capture via implied license subject matter in addition to that for which they bargained.”
Id. at *12.
[3: Injunction / Estoppel] Endo is not estopped from asserting the patents at issue in these appeals because none of the asserted patents is a continuation of any of the licensed patents [and is therefore beyond the terms of what was bargained for].
Id. at *13-14 (text added).
 
 
 
06/15/14
Category: Claim Construction 
 
 
 
 
 
By: Samuel Dillon, Contributor 
 
TitleTakeda Pharma. Co. v. Zydus Pharma USA, Inc., No. 2013-1406 (Fed. Cir. Feb. 20, 2014).
Issues
[1] Claim construction and Infringement[Whether the district court erred in finding that claim 1 was infringed because it] construed the claim term “fine granules having an average particle diameter of 400 μm or less” . . . to mean “fine granules up to and including the enteric coating layer having an average particle diameter of 400 μm (±10%) or less.”
Takeda at *3 (emphasis added) (text added).
[2] Indefiniteness[Whether] the '995 patent is indefinite because it does not specify the method of measurement that should be used to determine average particle diameter.
Id. at *10-11 (text added).
[3] Written Description[Whether claim 1 is invalid for lack of written description because it] addresses average particle size in the finished tablet, while the specification only teaches how to measure particle size pre-tableting with no discussion of how to ensure particle size is not altered by that process.
Id. at *14 (text added).
[4] Enablement[Whether] the patent is invalid for lack of enablement because a skilled artisan would not be able to determine the average particle diameter using the coulter counter method of measurement without undue experimentation.
Id. at *17 (text added).
Holdings
[1] Claim construction and Infringement
[T]he district court erred in reading a margin of error into the disputed claim term . . . when the phrase "400 μm or less" is not qualified by the word "about" or any other indicator of imprecision.
Takeda at *6.
[Without the added breadth of the margin of error,] there can be no dispute that Zydus’s ANDA product does not literally infringe claim 1 of the ’994 patent.
Id. at *9-10 (text added).
[2] IndefinitenessThat there is more than one way of determining the average particle diameter of a particular sample does not render that clear claim language indefinite.
Id. at *13.
[3] Written Description[A] hypothetical possibility that tableting could affect particle size in a relevant way [does not warrant finding] that the district court committed clear error by finding that such evidence was not clear and convincing proof of invalidity.
Id. at *15 (text added).
[4] Enablement[B]ecause the patent identifies laser diffraction as a viable measurement technique, and there is no dispute that a skilled artisan would know how to use laser diffraction to measure particle diameter, Zydus has not established that the patent is invalid for lack of enablement on this basis.
Id. at *16. 
 
 
06/13/14
Category: 103 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleBristol-Myers Squibb Co. v. Teva Pharma. USA, Inc., No. 2013-1306 (Fed. Cir. June 12, 2014).
IssueBMS attacks the lower court’s obviousness determination by contending that a skilled artisan would have had to make too many decisions to arrive at entecavir. Those decisions include selecting (1) the class of nucleoside analog compounds, (2) 2′-CDG as a lead compound from the class of carbocyclics, (3) the carbocyclic ring or guanine base of 2′-CDG for modification, (4) the 2’ or 5’ position on the carbocyclic ring, (5) the specific chemical element on the 5’ position (carbon), and (6) the type of carbon to carbon bond (single or double).
Bristol-Myers Squibb Co. at *9.
HoldingBased on (1) the structural similarity between entecavir and 2′-CDG, (2) the teachings of the Madhavan reference [teaching that adding an exocyclic methylene group to a carbocyclic nucleoside analog can result in a lead compound with improved antiviral activity], (3) the finding that the exocyclic methylene substitution would be a “small, conservative change[]”and (4) the “totality of the prior art” on 2′-CDG [teaching that 2′-CDG was a promising compound and subject to a multitude of modifications], the district court found [and the CAFC affirms] that a skilled artisan would have been motivated to substitute an exocyclic methylene group at the 5’ position of 2′-CDG, with a reasonable expectation of success of creating a compound with beneficial antiviral properties.
Id. at *7 (text added, no direct correspondence between issue and holding  numbering).
 
 
06/11/14
Category: Post-Grant Proceedings   
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleIn re Dinsmore, No. 2013-1637 (Fed. Cir. June 10, 2014).
IssueThe applicants argue that, because the ’568 and ’086 patents are not and never have been commonly owned, the recorded terminal disclaimer was “an ineffective, invalid terminal disclaimer” and its filing therefore was an “error” within the meaning of the reissue statute, 35 U.S.C. § 251.
In re Dinsmore at *6.
HoldingWe affirm the Board’s ruling because the applicants have not identified an “error” underlying the choices made in the original patent that they now seek to revise [and revising a conscious choice is not tantamount to remedying the result of a mistaken belief].
Id. at *7 (text added).
 
 
 
06/10/14
Category: 102  
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleIn re Rambus, Inc., No. 2013-1192 (Fed. Cir. June 4, 2014).
Issue[Micron argues that] multiplexed lines in Fig. 25a [of prior art reference Bennet] cause a delay of known value (one clock cycle) before data transfer. Setting Parameter VI to 1 causes the lines to be multiplexed. Therefore, [according to Micron,] Parameter VI [discloses] a “value that is representative of an amount of time to transpire after which the memory device outputs the first amount of data.”
In re Rambus, Inc. at *7 (text added).
HoldingParameter VI is only “representative” of one source of delay because the actual delay can be longer due to other factors. [Since changing Parameter VI does not necessarily create a one clock cycle delay], Parameter VI is not a “value that is representative of an amount of time to transpire after which the memory device outputs the first amount of data.”
Id. at *8 (text added).
 
 
06/09/14
Category: Post-Grant Proceedings  
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleVaillancourt v. Becton Dickson & Co., No. 2013-1408 (Fed. Cir. April 24, 2014).
IssueVaillancourt claims [...] that despite his assignment of the entire right, title, and interest in [U.S. Patent No. 6,699,221] to VLV [during reexamination], he was “authorized to continue with all related proceedings including further appeals” in connection with the reexamination.
Vaillancourt at *5, (text added, internal citation removed).
HoldingThe unambiguous language of [35 U.S.C.] § 141 provides that a patent owner alone can appeal a final decision in an inter partes reexamination to this court.
Id. at *4 (text added).
 
 
 
06/04/14
Category: Post-Grant Proceedings  
 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleConsumer Watchdog v. Wis. Alumni Research Found., No. 2013-1377 (Fed. Cir. June 4, 2014).
Issue[Attempting to establish an injury in fact sufficient to confer Article III standing,] Consumer Watchdog relies on the Board’s denial of Consumer Watchdog’s requested administrative action—namely, the Board’s refusal to cancel claims 1–4 of the ’913 patent [in an inter partes reexamination].
Consumer Watchdog at *5 (citations omitted).
HoldingBecause Consumer Watchdog has not identified a particularized, concrete interest in the patentability of the ’913 patent, or any injury in fact flowing from the Board’s decision, it lacks standing to appeal the decision affirming the patentability of the amended claims.
Consumer Watchdog at *8.
 
 
 
Editor's Notes
For further insight, check out the Audio Brief of oral arguments in Consumer Watchdog v. Wis. Alumni Research Found. by clicking here.
 

 
06/02/14
Category: 112 - Definiteness  
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleNautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (June 2, 2014).
IssueThis case, involving a heart­ rate monitor used with exercise equipment, concerns the proper reading of the statute’s clarity and precision de­ mand. According to the Federal Circuit, a patent claim passes the §112, ¶2 threshold so long as the claim is “amenable to construction,” and the claim, as construed, is not “insolubly ambiguous.” 715 F. 3d 891, 898–899 (2013).
Nautilus, Inc. at *1.
HoldingWe conclude that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement. In place of the “insolubly ambiguous” standard, we hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.
Id. at at *1.
 
 
 
 
Editor's Notes
For further insight, check out the Audio Brief of oral arguments in Nautilus, Inc. v. Biosig Instruments by clicking here.
 
06/02/14
Category: Infringement  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleLimelight Networks, Inc. v. Akamai Tech., Inc., No. 12-786 (June 2, 2014).
IssueThis case presents the question whether a defendant may be liable for inducing infringement of a patent under 35 U. S. C. §271(b) when no one has directly infringed the patent under §271(a) or any other statutory provision.
Limelight Networks, Inc. at *1.