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The PTAB interpreted claim language in the form of “at least one of A and B” to mean at least one of A and at least one of B in Ex parte Dong-Shin Jung et al. (Appeal No. 2016/008290, designated Informative on July 10, 2018). 

The claim, in pertinent part, at issue reads:

  1. A method for playing back a scene using Universal Plug and Play (UPnP), comprising:

[A.] sending, by a control point, a request for a scene to be played back to a media server that stores Audio/Video (AV) content;

[B.] receiving, by the control point, one or more scene objects comprising the scene to be played back from the media server in response to the request, each scene object including metadata representing at least one of

[i.] a precedence relation indicating the scene object’s location in a sequence of scene objects and

[ii.] a connection relation indicating one or more scene objects capable of replacing the scene object, the connection relation including at least one of

[1.] a connection branch and

[2.] a contents connection list having a first group identification…

During examination, the Examiner interpreted the claim language in the form of “at least one of A and B” to mean A or B.  In other words, in clause [B] above, the claim would only require a precedence relation or a connection relation.  The claim rejection relied upon a reference that taught the precedence relation but not a connection relation. 

The PTAB instead interpreted the claim language in the form of “at least one of A and B” to mean at least one of A and at least one of B, and based on this interpretation, reversed the rejection.  The PTAB cited SuperGuide Corp. v. DirecTv Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004) for the proposition the plain and ordinary meaning of “at least one of A and B” is at least one of A and at least one of B.  In this case, the Examiner did not provide any reasoning to support a deviation from this plain and ordinary meaning, and the PTAB was not able to find any such reason in the specification, i.e., did not find a special definition or disavowal. 

This is an interesting case and the PTAB must have thought so too in designating this opinion as informative.  While the reasons for designation as informative are unclear, the recurrence of an issue is one reason for designating opinions precedential.  This opinion provides a reminder that Federal Circuit case law supports the plain and ordinary meaning of “at least one of A and B” as being at least one of A and at least one of B, i.e., a conjunctive phrase.  The opinion also provides specific examples for ensuring a desired interpretation as a disjunctive phrase:

  1. at least one of A or B;
  2. at least one of A or at least one of B; or
  3. at least one selected from the group of A and B.
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Evidence that a patented feature drives customer demand is insufficient to justify damages under the entire market value rule (EMVR) when non-patented features may drive customer demand. Power Integrations, No. 2017-1875 (Fed. Cir. July 3, 2018). The Federal Circuit vacated a damages award for patent infringement from a jury that relied on the EMVR, noting that while the plaintiff showed that the patented feature drove demand of the accused products, the plaintiff did not show that valuable features of the accused products were not relevant to customer demand.

Plaintiff Power Integrations sued Defendant Fairchild for infringement of U.S. Patent Nos. 6,212,079 and 6,538,908, directed to power supply controller chips. A jury found infringement of the ‘079 patent and awarded a reasonable royalty of $139.8 million. The jury’s award was based on Plaintiff’s expert testimony of EMVR.

In general, damages are apportioned to the patented feature of the accused product. In a multi-component accused product, the royalty is limited to the smallest salable unit embodying the patented invention. However, when the plaintiff shows that the patented feature is the sole driver of customer demand, the plaintiff can ask for a royalty based on the entire product under the EMVR. Relying on the EMVR requires providing evidence that the patented feature drove the demand for the entire product.

The Court held that, despite Plaintiff’s evidence that the patented feature drove most of the demand for the accused product, the EMVR is only applicable when no other non-patented features were relevant to customers choosing the accused product. The parties agreed that the accused products had several additional features, and Plaintiff did not show that those features did not affect customer demand of the accused products. Because those features could drive demand for the products, the EMVR was not available and the Court vacated the damages award.

Lessons for Practice

The Federal Circuit again reminds us that damages calculations need to have sufficient evidential support. EMVR in particular is difficult to prove, as plaintiffs must provide evidence to show both that the patented feature drove demand and that non-patented features were irrelevant when determining damages. This case provides insight into the specific (and rare) situations where courts should apply EMVR, and reaffirms the Court’s admonishment to parties toward better apportionment of damages.

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A plaintiff seeking to enforce patents claiming automated methods for uploading multimedia content was ordered to pay defendants’ attorney fees based on a finding of an “exceptional case” under U.S.C. § 285.  Cellspin Soft, Inc. v. Fitbit, Inc., No. 4:17-CV-5928-YGR (N.D. Cal. July 6, 2018).  The court had previously granted motions to dismiss because claims of U.S. Patent Nos. 8,738,794; 8,892,752; 9,749,847; and 9,258,698 were not patent eligible under 35 U.S.C. § 101 and the Alice/Mayo test.  Relying on Inventor Holdings, LLC v. Bed Bath & Beyond Inc. (Fed. Cir. 2017), the court found the case exceptional because the claims were not only “manifestly directed to an abstract idea,” but, unlike the Inventors Holdings litigation, were sought to be enforced after a lot of post-Alice precedent should have made clear that the claims were patent-ineligible.

The plaintiff’s main basis for opposing the fee award was “a lack-of-bad-faith defense.”  One of its arguments was that “it reasonably relied on the presumption of validity following the issuances of the Asserted Patents, especially the two most recent patents.”  Not so fast, said the court, citing Judge Mayer’s concurrence in Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2014), stating that there was no presumption of eligibility, in contrast to the presumption of validity.  The court then took the plaintiff to task for its argument that “that it should not be forced to adjudicate the validity of its own patent and can rely on the courts to serve in that role,” explaining that patent plaintiffs must accept responsibility for their own actions:

Cellspin cannot hide behind its own refusal to analyze its patents critically. Lawyers routinely evaluate the viability of contracts and strength of claims and thereupon counsel clients to act responsibly. To do otherwise unnecessarily burdens to the courts and inflicts significant costs to the opposing parties. Given the patents at issue here, Cellspin could have litigated a test case but instead chose to file and pursue aggressively fourteen lawsuits simultaneously. It could have waited to issue overarching discovery requests but did not.

Lessons for Practice

Perhaps some day the Federal Circuit or the Supreme Court will resolve the question of whether, once the USPTO issues a patent, there is a presumption of patent-eligibility.  But does it matter?  Suppose a plaintiff sought to enforce a patent even though it knew there was a near, even if not absolute, certainty, that a product covered by the patent claims had been offered for sale several years before the application for the patent was filed.  Wouldn’t this plaintiff’s case be exceptional, the presumption of validity notwithstanding?  Similarly, hasn’t the law after Alice evolved enough so that some – maybe not many, but certainly some – patent claims are patent-ineligible under any legal light?

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The Federal Circuit has clarified what arguments may be made in a reply brief during a patent appeal. In In Re: Durance, No. 2017-1486 (Fed. Cir. Jun. 1, 2018), the Federal Circuit vacated the PTAB’s obviousness decision and remanded the case back for reconsideration because the PTAB failed to properly consider arguments made in Applicant’s reply brief.

 At issue was US Patent Application No. 12/682,989. Representative claim 1 on appeal recites:

  1. An apparatus for dehydrating organic material,comprising:

(a) a vacuum chamber having an input end for introduction of a container for the organic material into the vacuum chamber and a discharge end for removal of the container;

(b) a microwave generator;

(c) a microwave-transparent window for transmission of microwave radiation from the microwave generator into the vacuum chamber;

(d) means for reducing pressure inside the vacuum chamber;

(e) means for loading the container into the input end of the vacuum chamber;

(f) means for rotating the container inside the vacuum chamber so as to tumble the organic material in the container;

(g) means for moving the rotating container through the vacuum chamber from the input end to the discharge end thereof; and

(h) means for unloading the container of dehydrated organic material from the vacuum chamber at the discharge end thereof.

In addition to the apparatus of claim 1, the ‘989 application also included a method claim with similar limitations.

During prosecution the ‘989 application was rejected under 35 U.S.C. §103 as being obvious over US Patent No. 6,442,866 in light of U.S. Patent Application Publication No. 2005/0019209. The references taught the use of food receptacles for drying food in a heated vacuum, and rotating a container during a plasma sterilization treatment, respectively.  The Examiner alleged in a Final Rejection that the “means for rotating the container inside the vacuum chamber so as to tumble the organic material in the container” of claim 1 was disclosed by the prior art because organic material in a container “will tumble when the container in is rotation” as “merely an inherent function of all rotating containers.” The Examiner also rejected claim 1 under 35 U.S.C. §112 because the claim language “so as to tumble the organic material in the container” was allegedly not support by the ‘989 Application as originally filed.

Applicant sought further consideration of the Final Rejection under ACFP 2.0, and argued that the rejection was improper because rotation of a container does not teach tumbling materials within the container, and further pointed to portions of the specification that supported the tumbling limitation which described divider walls within the container. The Examiner withdrew the §112 rejection, but maintained the §103 rejection.

Applicant appealed, arguing in an Appeal Brief that the combination of prior art did not inherently teach the tumbling limitation. The Examiner argued in an Answer to the Appeal Brief that there was no structural difference between the claimed apparatus and the combined teachings of the prior art, i.e., that the prior art and the disclosure of the ‘989 application were structurally identical. The Examiner did not designate the structural identity argument as a new ground of rejection.

Applicant then argued in a Reply Brief that the structural identity argument was factually inaccurate. Specifically, the specification of the ‘989 application described the means for rotating the canister as being motorized gears, and that the means for the tumbling limitation was described with the use of the dividers inside the canister. In contrast, the prior art relied on gravity to rotate canisters and was silent with regard to internal dividers. Applicant further argued that the structural identity argument could not be used to reject the method claim.

Ruling on the appeal, the PTAB sided with the Examiner, stating that “given the appropriate selection of rotation speed and material for the inner surface of the container, tumbling would be inherent.” The PTAB disregarded Applicant’s Reply Brief arguments as not being responsive to arguments made in the Answer.

Applicant sought rehearing on the basis of improperly applied inherency doctrine. The PTAB denied rehearing stating that the obvious rejection did not rely on the inherency doctrine and refused to consider Applicant’s arguments regarding the divider walls.

Applicant then turned to the Federal Circuit to appeal the PTAB determination. The Federal Circuit sided with Applicant, and remanded the case to the PTAB to consider the inherency arguments. To support the decision, the Federal Circuit first pointed out the shifting arguments made by the Examiner. Specially, the Examiner cited different Figures throughout her various arguments, and the PTAB failed to identify which Figure was relied upon for upholding the Examiner’s rejection. Further, the Federal Circuit noted the tension between the Examiner and the PTAB rejecting the claims because they were allegedly inherent in the prior art and the PTAB’s assertion that the rejection did not rely on the inherency doctrine. Finally, the Federal Circuit pointed out the Examiner first made an argument regarding structural identity in her Answer to the Appeal Brief, and that Applicant’s unconsidered arguments regarding the dividers in the Reply were in response to such arguments and should have been considered.

In discussing whether the dividers should have been considered in response to the structural identity arguments in Examiner’s Answer, the Federal Circuit noted that the Applicant had no notice of Examiner’s structural identity arguments until the Answer. The Federal Circuit further pointed out that a special designation is not required for new arguments to be considered new grounds of rejection, and that an Applicant may response in their Reply to new arguments first raised in an Answer without showing good cause.

Lessons for Practice

Similar to traditional litigation, prosecuting a case before the Patent Office, and subsequently appealing that case when necessary, should be undertaken with an understanding of an overall theory that takes into account the facts and the law. Here, the Examiner did not have such a theory, resulting in wasted resources of both the Patent Office and the Applicant. The court therefore held that new arguments raised in an Answer during an appeal could be rebutted in a Reply. Patent Attorneys and Agents finding themselves in similar situations are best advised to work with the Examiner to help understand the Examiner’s theory supporting a rejection, and should watch for arguments made for the first time in an Examiner’s Answer for a Reply.

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Patent claims directed to providing output in tactile patterns on a mobile device to provide an encoded message have survived a 35 USC § 101 patent-eligibility challenges under the Alice/Mayo test. In Ironworks Patents LLC v. Apple, Inc., No. 17-1399-RGA (D. Del. June 12, 2018), the court denied the defendant’s motion to dismiss for failure to state a claim under FRCP 12(b)(6).

The defendant argued that the claims of US Patent No. 6,850,150 and US Patent No. 8 ,847,734 simply applied a patent-ineligible “abstract idea – using a vocabulary to convey information – to the user interface of the portable electronic device.” But the court was more persuaded by the plaintiff’s argument that “[c]laims to tangible systems are typically patent eligible.”

In support of its position, the plaintiff had cited two notable recent cases. The first of these was the recent Federal Circuit decision in Aatrix Software, Inc. v. Green Shades Software, Inc., positing fact questions that could be resolved to “establish that the claimed combination contains inventive components and improves the workings of the computer.” Second, the plaintiff noted the Northern District of California’s March, 2018, holding in Immersion Corp. v. Fitbit, Inc., that claims directed to providing haptic (i.e., tactile) feedback were patent-eligible.

Comparing the present claims favorably to the claims at issue in Immersion Corp., the court further found the claims similar

to the claims in Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017), [reversing] the district court’s conclusion that the claims were directed to the “abstract idea of categorical data storage,” stating that the claims “demonstrate[ d] that they are directed to an improved computer memory system . . . .” Likewise, the asserted claims here are directed to an improved “portable device” and “mobile station,” respectively. The claims might incorporate the abstract idea of “using a vocabulary to convey information,” but that does not mean that each claim in its entirety is directed to the abstract idea of “using a vocabulary to convey information,” or to any other abstract idea.

It seems to me that the claims here, directed to generating and providing haptic output in a pattern, could be characterized as fairly different from the Visual Memory claims, which were directed to categorizing and storing data in a computer cash. Moreover, take a look at a case the court here did not cite, but certainly could have: Recognicorp, LLC. v. Nintendo Co., Ltd., 855 F. 3d 1322 (Fed. Cir. 2017), which held a technique for encoding image data to be patent-ineligible.

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Where distinct physical concepts recited in a patent claim and applied prior art are related and can achieve same results, do not count on being able to distinguish teachings of the prior art.  In Mobileye Vision Technologies Ltd. v. iOn Road, Ltd., No. 2017-1984 (Fed. Cir. June 12, 2018) (non-precedential), a patent claim recited determining “a likelihood of collision responsive to whether or not the lateral displacement substantially uniformly approaches zero.” The Federal Circuit held this claim obvious, under 35 U.S.C. § 103, over prior art showing use of a constant lateral velocity, rather than lateral displacement, to determine a point of intersection. Accordingly, the court agreed with both the patent examiner in inter partes review, and the Patent Trial and Appeal Board (PTAB), that claim 6 of US Patent No. 7,113,867 would have been obvious over a combination of references including US Patent No. 4,257,703.

The patent owner had argued that the PTAB had ignored the claim’s requirement that the lateral displacement approach zero “substantially uniformly.” According to the patent owner, “substantially uniformly” was a limitation on “how the lateral displacement approaches zero, not just whether it approaches zero.” (Emphasis in original.) But the Federal Circuit agreed with the challenger’s argument that distinguishing lateral displacement from lateral velocity “is a distinction without a difference.” If, the court said, “lateral displacement over time is substantially uniform,” then an object is moving “approximately the same lateral distance,” i.e., “at a constant lateral velocity,” as taught in US 4,257,703.

Lesson for Practice

Be careful when you are trying to distinguish prior art by alleging a distinction between physical concepts, when the prior art works in the same way as your claim, and achieves the same result as your claim.

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The Federal Circuit’s famous (or infamous) decision that one DDR Holdings’ patent was not invalid under 35 U.S.C. § 101 was used to support a district court’s denial of a motion for judgment of § 101 for three other DDR Holdings’ patents.  In DDR Holdings, LLC v. Priceline.com, LLC, No. 17-498 (D. Del. June 5, 2018), the court denied a motion for judgment on the pleadings, because the three present patents-in-suit share the same inventive concept” as U.S. 7,818,399, which the Federal Circuit held patent-eligible in its 2014 decision in DDR Holdings, LLC v. Priceline.com, LLC.

The previously-litigated ’399 patent is entitled “Methods of expanding commercial opportunities for internet websites through coordinated offsite marketing,” and claims, in a nutshell, one online merchant to presenting retail opportunities framed with branding of another online merchant.  DDR Holdings’ three patents now at issue are the following:

  • S. 8,515,825, Methods of expanding commercial opportunities for internet websites through coordinated offsite marketing;
  • S. 9,043,228, Specially programmed computer server serving pages offering commercial opportunities for merchants through coordinated offsite marketing; and
  • S. 9,639,876, Method and computer system for serving commerce information of an outsource provider in connection with host web pages offering commercial opportunities.

The Federal Circuit had found that the claims of the ’399 patent “recite a specific way to automate the creation of a composite web page by an ‘outsource provider’ that incorporates elements from multiple sources in order to solve a problem faced by websites on the Internet.”  The three patents here differed only in that “they do not specify that the outsource provider generates the composite page.”  This was an unessential detail regarding the shared inventive concept of “the automated delivery of the page by an outsource provider that incorporates the look and feel of the host site with the details of the merchant’s product.”

We will never know how these three patents would have been evaluated if they did not share this heritage with the ’399 patent and were considered in isolation.

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The Federal Circuit has held that claim terms “program” and “user interface code,” as used in the phrases “program that can operate the movement of the pointer” and “user interface code being configured to detect one or more locations touched by a movement of a user’s finger” are not subject to interpretation as “means-plus-function” limitations. Zeroclick, LLC, v. Apple Inc., (Fed. Cir. June 1, 2018) (precedential).

The patents-in-suit were U.S. patents 7,818,691 and 8,549,443. Zeroclick alleged that Apple infringed claims 2 and 52 of the ‘691 patent and claim 19 of the ‘443 patent. Apple asserted invalidity of those claims for indefiniteness. The claims, Apple asserted, recited means-plus-function terms under 35 U.S.C. §112 ¶6 (post AIA 35 U.S.C. §112(f)) without sufficient supporting structure in the specification.

Claim 2 of the ‘691 patent and claim 19 of the ‘443 patent are representative.

  1. A graphical user interface (GUI), which may comprise an update of an existing program, that may fully operate a GUI by a two step method of movement of a pointer (0) to operate one or more functions within the GUI,

wherein, said existing program is any existing program that can operate the movement of the pointer (0) over a screen (300) and has one or more functions operated by one or more other methods apart from said two step method,

and/or one or more functions operated by said one or more other methods in said existing program can be updated to operate by said two step method,

wherein said GUI executes one or more functions within the GUI by the completion of the following said two step method;

first said pointer (0) is immediately adjacent or passes within a control area (1), which is an area of the screen (300) that may be any size including from a pixel on the screen (3))) to occupying the whole screen (300), and

second by the completion of a subsequent movement of said pointer (0) according to a specified movement generates a ‘click’ event, thereby triggering one or more functions within the GUI.

  1. A device capable of executing software comprising:

a touch-sensitive screen configured to detect being touched by a user’s finger without requiring an exertion of pressure on the screen;

a processor connected to the touch-sensitive screen and configured to receive from the screen information regarding locations touched by the user’s finger;

executable user interface code stored in a memory connected to the processor;

the user interface code executable by the processor:

the user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation; and

the user interface code is further configured to cause one or more selected operations, which includes one or more functions available to the user interface code of the device, to deactivate while the user’s finger is touching one or more locations on the screen.

First, the CAFC noted, neither of the terms in question use the word “means.” Even after Williamson v. Citrix Online, LLC, there is a presumption that § 112, ¶ 6, does not apply. The essential inquiry is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” (.) Apple provided no evidentiary support to establish that the limitations at issue should be construed under §112 ¶6. The district court legally erred by not giving effect to the unrebutted presumption against the application of §112 ¶6.

The district court thus effectively treated “program” and “user interface code” as nonce words, which can operate as substitutes for “means” and bring the claims within the ambit of §112 ¶6. The court identified three reasons why this is erroneous:

(1) The fact that claims incorporate functional language does not automatically convert the words into means for performing such functions. Many devices take their names from functions they perform (filter, brake, clamp, screwdriver, lock, etc.)

(2) The context strongly supported the plain and ordinary meaning of the terms. For example, claim 2 of the ‘691 patent recites “[a] graphical user interface” which may comprise “an update of an existing program” (emphasis added by the court) Claim 19 of the ‘443 patent recites that the “user interface code” to the code “stored in a memory connected to the processor.” A person skilled in the art would understand these terms to refer to conventional graphical user interface programs or code, existing in prior art at the time of the inventions.

(3) The district court findings do not compel the conclusion that the terms “program” or “user interface code” are used as a substitute for “means.” Further, the patent owner makes no such acknowledgement. Accordingly, the district court erred by effectively treating these terms as nonce words.

Lessons for Practice

  1. Although weakened by Williamson, the presumption remains that § 112, ¶ 6, does not apply absent the word ”means” in a claim. An examiner still has the burden of providing evidence that a word such as “program” is used to invoke a “means-plus-function” limitation.
  2. When using a term to invoke a function well known in the art, use terms that invoke some idea of structure such as “program” or “user interface code.” Surround the terms, in the CLAIM, with additional detail. See, e.g., claim 2 above which includes multiple references to “an (said) existing program,” each adding detail related to its function.
  3. Tie the term to at least some structure, e.g., “stored in a memory connected to a computer.”
  4.  Be prepared to lose this battle. Include a lot of detail, i.e., possible structure, algorithms, flow charts, in your specification. Consider including an explicit means-plus-function claim to differentiate your structural claims. This is treated in detail in our post on Williamson (link above)
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Be careful with the conventional wisdom that tells a patent drafter to use permissive, open-ended language when describing features of an invention.  Like me, you may have been taught to avoid “patent obscenities” like “invention,” “objects,” etc., and to use permissive helping verbs wherever possible, i.e., “the widget [could, might, can, may, etc.] be blue,” rather than “the widget is blue.”  Be careful: the conventional advice is good advice most of the time – but not, I believe, all of the time.

Consider this patent drafting guideline:

A patent specification should use verbs of possibility by default. However, in describing various embodiments, use limiting verbs for features that are necessarily present in every embodiment.

This is guidance for lawyers, so of course it comes with many caveats. Often there is a gray area encompassing the line between features that do and do not truly limit the invention.  Thus, as the rule suggests, err on the side of open-ended language. But be mindful of instances where permissive language can hurt, and will not help.

First, a reminder why the selection of an open-ended versus a limiting verb matters. It’s pretty simple. Open-ended or permissive verbs provide support for claim language without, the theory goes, potentially limiting the scope of the claim. In the above example, describing the widget in the specification as possibly blue allows a claimed widget, so long as the claim does not specify a color limitation, to be blue or possibly some other color. On the other hand, if the specification says simply “the widget is blue,” then an accused infringer making, using, or selling red widgets will have an argument for a claim construction limiting claimed widgets to the color blue.  Sure, the patentee might still be able to enforce against red widgets.  However, at a minimum you risk a costly argument, and at worst you allow infringers to escape enforcement, probably based on a feature that is not even critical to the inventive concept.

Now, if definite, limiting language can be used to restrict claim scope and allow potential infringers to get off the hook, why would you ever use it? Some might say that this is a rhetorical question, because everything in a patent specification should be couched in terms of example and possibility. I agree that it is a good idea to err in in the direction of permissive language. But think about whether open-ended language can increase a claim’s exposure to prior art, and maybe even give rise to indefiniteness under 35 U.S.C. § 112(b), without expanding the scope of the claim against potential infringers one iota.

To put this another way, what if the widget being blue is part of the widget’s essential being, part of the widget qua widget?  Consider a slightly more complex hypothetical. Suppose you have a patent claim directed to an apparatus that comprises a “stringed musical instrument.” Suppose further that the claimed invention is only applicable to stringed instruments played with a bow, i.e., there is no possible way that a plucked instrument such as a guitar or a harp could be used to infringe a claim. In this instance, your patent specification should state that the instrument being discussed “is” played with a bow, not that it “could be” played with a bow.

Why?  Remember, we have determined that there is no possibility that someone could infringe with any other kind of stringed instrument, i.e., a non-bowed instrument.  Any embodiment of the inventive concept to be claimed only makes sense with instruments played with a bow.  On the other hand, a patent examiner or accused infringer might want to use prior art pertaining to plucked stringed instruments against certain features in the claims.  Clear, limiting language in the specification, which could even be added to the claim if warranted to expedite patent prosecution, can help limit the scope of prior art that a patent examiner or accused infringer can apply. And it will be harder for anyone to argue that it is unclear what kind of stringed instrument is covered, and that therefore your claim is indefinite, or that your specification lacks adequate written description.

This post is part of an occasional series discussing patent preparation and prosecution tips and tricks.

Like all posts on this blog, this post is not legal advice and does not establish an attorney-client relationship. As any competent practitioner understands, preparing and prosecuting a patent application is often informed by subjective factors, will vary from application to application, and may be done differently by different reasonable and competent practitioners. The above is an abstract discussion to provide food for thought, and not commentary about what should or should not be done on any particular set of facts or in any particular real-world situation.

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A decision holding that an a YouTube video is a printed publication under 35 U.S.C. § 102(a) is a reminder that one should always assume that content on the Internet accessible via a public search engine qualifies as prior art.  HVLPO2, LLC v. Oxygen Frog, LLC, No. 4:16cv336-MW/CAS (N.D. Fla. May 28, 2018).  In this case, the video in question would have been found in the top twenty results produced by a search of YouTube for “oxygen concentrator system.”  Citing Blue Calypso, LLC v. Groupon, Inc. (Fed. Cir. 2016), the court thought that “[s]urely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the “reasonable diligence” that the law expects of a hypothetical prior-art subject.”

In other words, just like if you got yourself a bone with some meat on it, baby, you got a stew going, if you have Internet content that can be found by searching on a public website, then you’ve got some prior art going.

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