February 1, 2012
Mobius Claim
6,879,830
goes to "a method for handing over a link between" base stations for a
mobile phone. Actually, a mobile phone is claimed, an apparatus, but
where a claimed networking method must be performed for
the claimed handover to occur. Thus the meat of the claims are of a
method, though the claim is of an
apparatus, which is a transgression of §112 ¶2, indefiniteness, for
mixed claim types, vis-à-vis IPXL
v. Amazon.
So this ruling is easy. But not so fast. Consistency is the hobgoblin
of small minds. As
there are no small minds on the CAFC, there is no need for consistency.
Continue reading "Mobius Claim"
Posted by Patent Hawk at 11:15 PM | § 112
January 24, 2012
No Credit
Dealertrack sued Huber and
Finance Express, along with other auto
dealers, for infringing its network-based credit application processing
patents: 6,587,841
& 7,181,427.
A biased Judge
Guilford in Central California inexcusably construed "network," which
had been broadly disclosed, as "not including the internet." Defendants
drove away with non-infringement. Other inanity ensued, only some of
which was corrected by the CAFC on appeal.
Posted by Patent Hawk at 7:43 PM | Claim Construction
January 11, 2012
Bleeding
Streck sued Research &
Diagnostic Systems (R&D) for infringing hematology control patents 6,200,500
and 6,221,668.
R&D counterclaimed a declaratory judgment action of noninfringement
and invalidity. The two competitors were innovating in stride, but
Streck had the edge, at least with the favor of the courts, which is
really all that matters.
Posted by Patent Hawk at 2:02 PM | § 112
August 29, 2011
Distributed Incompetence
Mitsui Bussan Logistics tried to get a patent on product distribution chain
management (10/798,505).
The examiner at the PTO was typically feeble in
examination, as was the patent board. At the CAFC,
Judges Linn and Gajarsa illicitly ran
over the claims. In dissent, Judge Newman was the only competent party in the
chain of adjudication. One more chip on the plentiful pile of evidence that the U.S. patent system is
dysfunctional and corrupted.
Continue reading "Distributed Incompetence"
Posted by Patent Hawk at 1:00 PM | § 112
August 26, 2011
Butted
For years, Star Scientific has been trying to smoke R.J. Reynolds Tobacco for
infringing its tobacco curing patents:
6,202,649 &
6,425,401, but couldn't get the match to strike. Down-and-dirty litigation
tactics tarnished Star.
As usual, the corporate giant won again, as the CAFC displayed divisions within.
Posted by Patent Hawk at 1:07 PM | § 112
June 19, 2011
Stomped Stamp
The
Court of Errors has become a butchery. Obzilla's minions, while on a tear, are cautious enough to
roll their unjust killings under the rug in nonprecedential opinions. The
instant episode is Stamps.com v. Endicia.
Continue reading "Stomped Stamp"
Posted by Patent Hawk at 9:13 PM | Prior Art
June 15, 2011
Mean Means
6,892,861
and
6,935,465 claim elevator "modernizing" devices and methods. Patent owner
Inventio sued competitor ThyssenKrupp for infringement. In the claim
construction dust-up, the district court's grasp of means-plus-function needed
some modernizing, for missing the necessity of "means" in proclaiming that §
112, ¶ 6 applied. The confused judge declared the asserted claims indefinite
under § 112 ¶ 2. The misdirection of defense counsel was caught out on appeal,
as was behavior unbecoming of a litigator, in a rare slap at counsel by the
CAFC.
Posted by Patent Hawk at 10:03 PM | § 112
June 10, 2011
Described and Enabled
35
U.S.C. § 112, ¶ 1 has two requirements: 1) a written description so as to enable
any person skilled in the art to make and use the claimed invention; 2) a best
mode "set forth." The first requirement is of a piece. Any description that
falls short of enablement is inadequate. But case law has grown a thicket of
complication, essentially bifurcating adequate written description from
enablement, even as the statutory inquiry is singular. The CAFC majority opinion
in Boston Scientific v. Johnson & Johnson muddies the bifurcation, albeit
flying under the banner of written description, not enablement. The partial
concurrence disliked the mud, and the banner.
Continue reading "Described and Enabled"
Posted by Patent Hawk at 3:09 PM | § 112
May 2, 2011
Bled Dry
5,674,681
&
6,355,425 claim methods to identify hemochromatosis, a genetically vectored
blood iron disorder. Owner Billups-Rothenberg sued Associated Regional and
University Pathologists (ARUP) and Bio-Rad Laboratories for infringement. The
assertion was bled dry, by lack of written description to the invention claimed
in '681, and the later '425, not related to '681, anticipated by
6,025,130.
Posted by Patent Hawk at 2:14 PM | § 112
April 29, 2011
À La Mode
Plastic
beverage bottles represent a health hazard and an environmental blight, but
are blandly typical of short-sighted humans on a petroleum-fueled bender to
planetary ruin.
7,094,863 & sibling
7,129,317 claim a particular plastic bottle resin, polyethylene
terephthalate ("PET"), that keeps a bottle clear when "hot-filled". Prior art
bottles turned hazy when filled by hot liquids that promote leaching of
endocrine disruptors, which all hot-filled PET bottles do - hazy or clear.
Wellman sued Eastman Chemical for infringement. Eastman got an á la mode summary
judgment over best mode, because the
disclosure held back critical data as a trade secret. That tony ruling, had
without even cursory claim construction, got appealed, as did § 112 ¶ 2
indefiniteness.
Posted by Patent Hawk at 12:03 PM | § 112
April 19, 2011
Not A Rembrandt
Rembrandt got its hands on some old patents:
5,602,869 &
5,844,944. But Rembrandt recognizing previous owners and licensees eluded it on a
greedy rush to a payday. Not to mention ersatz claims drafting. Rembrandt sued AOL and a slew of telecommunications
companies for infringing an industry standard, the V.34 modem protocol. The
protocol to payday didn't go Rembrandt's way.
Continue reading "Not A Rembrandt"
Posted by Patent Hawk at 9:28 PM | Exhaustion
April 1, 2011
Chuck Up
6,848,875
and continuation
6,935,826
claim beer or soda pop cans. Hot off the USPTO press, owner Crown tried to seal
competitor Ball into an infringement can. Ball burst out by summary judgment,
"that the asserted claims were invalid for violating the written description
requirement," and anticipated.
Posted by Patent Hawk at 4:17 PM | § 112
February 24, 2011
Claim Construction Tumor
In balloon brachytherapy, a balloon is inserted into the body proximate to a
tumor. The balloon has a lumen, acting as a radiation source to fry the tumor.
6,482,142 claims a device for performing balloon brachytherapy. '142 owner
Hologic sued SenoRx for infringement. Action at the district resulted in prior
art invalidity based upon claim construction. On appeal, a wrong call by a CAFC
panel majority points to a chronic disease in tolerating ambiguity.
Continue reading "Claim Construction Tumor"
Posted by Patent Hawk at 9:55 PM | Claim Construction
February 23, 2011
Not In Possession
7,070,775
claims an immunological agent for tumor treatment. Co-owners Centocor and New
York University sued Abbott for infringement. Rejecting Abbott's invalidity
defense, a jury awarded Centocor over $1.67 billion in damages. The district
court judge wouldn't entertain post-trial § 112, ¶ 1 invalidity JMOL. Appeal
shows that junk patents still crowd the courthouse, abeted by legal arguments
that reek of corruption.
Continue reading "Not In Possession"
Posted by Patent Hawk at 10:18 PM | § 112
February 19, 2011
Bad Connection
Ronald A. Katz sued a crop of companies over his call processing patent portfolio in a variety of venues. Consolidation led to loss at district court. For the umpteenth time, a CAFC ruling demonstrates the random competence of all involved before the appeals panel. Patent litigation is a crap shoot because a lot of what comes out of lawyers, whether on the bench or belting it out, is crap. It helps when patent claims are largely crap, which is not at all unusual either. Once again, the CAFC proves its worth in sorting it all out.
Continue reading "Bad Connection"
Posted by Patent Hawk at 3:32 PM | § 112
February 9, 2011
Getting Definite at the USPTO
The
patent office has issued
supplementary guidelines for examining claims in patent applications for
compliance with 35 U.S.C. §112 ¶2. The PTO thinks "it is of utmost importance
that patents issue with definite claims that clearly and precisely inform
persons skilled in the art of the boundaries of protected subject matter." The
guidelines are effective as of today. Written comments are accepted until April
11, 2011. "No public hearing will be held."
Continue reading "Getting Definite at the USPTO"
Posted by Patent Hawk at 1:25 PM | Prosecution | Comments (36)
September 23, 2010
Masked
7,156,100
claims a mask stuck down the throat, to deliver anesthetic gas during surgery,
and provide an unobstructed airway. The poetically named Lanryngeal Mask Company
(LMA) sued Ambu for infringement. For that, "all claims were invalid for lack of
written description under 35 U.S.C. § 112" in summary judgment, along with
noninfringement. Gasping for air, LMA appealed. At issue was claim construction,
and whether the inventor had acted as his own lexicographer. "A patentee may act
as its own lexicographer and assign to a term a unique definition that is
different from its ordinary and customary meaning; however, a patentee must
clearly express that intent in the written description."
Posted by Patent Hawk at 5:16 PM | Claim Construction | Comments (4)
September 12, 2010
On The Verge
5,910,514
claims a colorant for synthetic mulch made of rubber, an ecologically disgusting
invention only a suburban garden gnome could appreciate. The district court
didn't appreciate that claims relied upon a purported colorant system: "Visichrome,"
produced by a different company, which appeared fictitious in retrospect. This
resulted in summary judgment invalidity by breach of best mode, in the course of
'514 owner Green Edge trying to trim the verge of infringement by Rubber Mulch
and Rubber Resources.
Continue reading "On The Verge"
Posted by Patent Hawk at 8:45 PM | § 112
September 10, 2010
Backbreaker Broken
Spine
Solutions, Inc. (SSI) sued Medtronic for infringing
6,936,071, which claims a spinal implant, "used to replace discs between
vertebrae in the spinal column that have degenerated or become diseased."
Summary judgment of infringement for claims 1 and 2, and dismissal of "all of
Medtronic's 35 U.S.C. § 112 defenses" led to stipulated capitulation by
Medtronic, setting up a trial on damages and obviousness. SSI was going for lost
profits even though it didn't sell or make any device covered by '071. But SSI's
sister companies did. SSI was allowed to amend its complaint to include them.
The jury found '071 not invalid, and willfully infringed, to the $5.7 million in
lost profits, and an 18% reasonable royalty on $9.1 million in infringing sales.
Whereupon the district court doubled the damages and awarded attorneys fees.
Adding insult to injury, the court entered a permanent injunction. All that left
Medtronic a lot to appeal. And some of it was appealing to the CAFC.
Continue reading "Backbreaker Broken"
Posted by Patent Hawk at 11:32 PM | Case Law | Comments (1)
September 4, 2010
Bone Loss
Eli
Lilly got 6,458,811
and
6,894,064 (the "Particle Size Patents") for processing "raloxifene particles
until their size falls 'within a specified narrow range.'" Raloxifene, an
antiestrogen, aims at treating osteoporosis in women by mimicking estrogen,
without inciting increased incidence of breast cancer.
6,906,086;
RE39,049; and
RE38,968 (the "Bone Loss Patents") aim more specifically at preventing bone
loss. RE39,050 was
called by the court "the Low Dose Patent." Generic drug manufacturer Teva
embroiled itself into a patent fight with Lily by filing an ANDA with the FDA to
make generic versions. Lilly prevailed on all but the Particle Size Patents -
not invalidated by prior art, but by failing the written description requirement
of §112.
Posted by Patent Hawk at 7:29 PM | § 112 | Comments (1)
July 6, 2010
Garbage Bits
Telcordia
sued Cisco for infringing network data transfer patents
4,893,306;
4,835,763; and
RE36,633. '306 was knocked out by noninfringement in summary judgment. '763
and '633 ran the gauntlet through trial to a $6.5 million damages award. The
district judge then tacked on prejudgment interest, an accounting for interim
sales, and "ordered the parties to negotiate the terms of a royalty that would
apply to the accounting and to post-judgment sales." Telcordia appealed the '306
claim construction. Cisco cross-appealed '306 and '763 validity, as well as the
post-trial damages award and ongoing royalty negotiation dictate.
Continue reading "Garbage Bits"
Posted by Patent Hawk at 8:47 PM | Claim Construction | Comments (1)
June 2, 2010
Spun
Haemonetics
sued Fenwal for infringing centrifuge patent
6,705,983. Litigation whirled away all but claim 16 as asserted. District
court claim construction defined a "centrifugal unit" as a vessel, even, though
the claim preamble read a "centrifugal unit comprising a centrifugal component
and a plurality of tubes." '983 was found not invalid and infringed, resulting
in $11.3 million in lost profits damages and $4.3 million in reasonable royalty damages.
Appeal paid more attention to the preamble. Plus, a new spin to the old standard
of §102 ¶2.
Posted by Patent Hawk at 3:31 PM | Claim Construction | Comments (4)
May 26, 2010
Definitely
The CAFC standard for §112 ¶
2 indefiniteness is lax. A panel rehearing petition in Enzo v. Applera
(CAFC 2009-1281o)
was denied, but Judge Plager, in dissent, had some choice words on the topic.
Posted by Patent Hawk at 4:41 PM | § 112 | Comments (11)
April 27, 2010
Attention Deficit
6,919,373
is a drug patent that claims a treatment regime for folks with short attention
spans. The claims specifically go to "an ascending release rate over an extended
period of time." A bench trial found '373 not infringed, and "invalid for lack
of enablement because the specification does not enable the full scope of claim
1, which covers both osmotic and non-osmotic dosage forms." Enablement hinged on
whether undue experimentation was needed to deliver an oral dosage that didn't
rely upon osmosis. The district court found too much tinkering was needed based
upon scant disclosure, hence the claims were not enabled. Appeal found the same
deficit of attention.
Continue reading "Attention Deficit"
Posted by Patent Hawk at 1:01 PM | § 112 | Comments (3)
April 13, 2010
Waving Goodbye
Anascape
sued Nintendo and Microsoft over
6,906,700, which claims multiple controller input with tactile feedback.
'700 is a CIP of
6,222,525. As such, '700's earliest possible priority date for its claims depends upon spec
support within '525. And so '700's validity, as invalidating prior art lies
between the '525 filing date and the '700 filing date. Thereupon hangs the
patent's fate, upon whose reliance is an early priority date.
Continue reading "Waving Goodbye"
Posted by Patent Hawk at 9:26 AM | § 112 | Comments (12)
April 4, 2010
Readily
Hearing Components
sued Shure over hearing aid patents
4,880,076;
5,002,151;
and
5,401,920,
technologies used in Shure's earphones. The district court outcome was invalidity by indefiniteness for
'920 asserted claims, and noninfringement for a few claims of '076 and '151 for Shure's product that used a straight nozzle. A jury found the '076 and '151
patents "not invalid and infringed by Shure's products both with a barb and with
a straight nozzle," and awarded $4.6 million in damages. Post-trial, the judge
granted a portion of Shure's noninfringement motion, but left the patents valid.
That went to appeal, as well as denying Shure noninfringement JMOL for its
barbed nozzle earphones, and denying laches. Hearing Components wanted another
hearing on the claim term "readily" turning its claims deaf to definiteness.
Posted by Patent Hawk at 12:39 PM | § 112
March 24, 2010
Enabling Written Description
Ariad
sued Eli Lilly over
6,410,516. Trial found a valid patent infringed. A first appeal "held the
asserted claims invalid for lack of written description." "Ariad petitioned for
rehearing en banc, challenging this court's [CAFC's] interpretation of 35
U.S.C. § 112, first paragraph, as containing a separate written description
requirement." Reaffirmation.
Continue reading "Enabling Written Description"
Posted by Patent Hawk at 10:33 AM | § 112 | Comments (7)
March 9, 2010
Less Than Best Mode
The
American arm of Japan's Ajinomoto complained to the ITC to stop foreign imports
of dietary supplement lysine, under the aegis of
5,827,698 and
6,040,160. The snag was that their patent applications didn't actually
disclose their production techniques. That cost them the patents for failing to
meet best mode, and inequitable conduct for knowingly doing so.
Continue reading "Less Than Best Mode"
Posted by Patent Hawk at 4:18 PM | § 112 | Comments (8)
February 27, 2010
Static
Trading
Technologies sued eSpeed and Ecco for infringing
6,772,132 &
6,766,304, which go to displaying "static price levels" on a computerized
board for commodity trading. One service product infringed, but others literally did not, and applying the
doctrine of equivalents was proscribed. Defenses to
indefiniteness and inequitable conduct went nowhere, as did on-sale bar (§
102(b)) based on a provisional priority date. Affirmation on appeal toted up
dynamic case law quotes, not on sale, but ones that litigators must buy.
Posted by Patent Hawk at 4:59 PM | Claim Construction | Comments (3)
December 13, 2009
So Unlike Concrete
In
an extremely messy patent case involving claim construction (and correction),
noninfringement, invalidity, laches, indefiniteness, trade secrets, and topped
with several business torts, Ultimax Cement had its quick-set concrete patents
crumble by a sledgehammer summary judgment at district court, and so Ultimax
sought repair at the CAFC. The foundation of the patent problem: lack of careful
proofreading by the prosecutor.
Continue reading "So Unlike Concrete"
Posted by Patent Hawk at 1:04 AM | Claim Construction | Comments (3)
September 27, 2009
Brain Damaged
Janssen
battled a gaggle of generic
drug makers over "a method for treating Alzheimer's disease with galanthamine."
The patent of contention was
4,663,318. The issue before the courts was enablement (§112 ¶1), which, on
appeal, the
CAFC majority tied to utility (§101) for instant determination.
Continue reading "Brain Damaged"
Posted by Patent Hawk at 1:30 PM | § 112
September 4, 2009
Junk Examination
To
characterize USPTO examination quality over
the past 20 years as uneven would be a complimentary understatement. 'Good
enough for government work' would be more like it, with 'shoddy' pithily
on-point. In the 1990s the PTO granted reams of junk patents, creating a
political firestorm as the junk hit the litigation fan. In the past few
years, the reaction by a politicized patent office has been a sphincter of parsimony: not granting patents for deserved
inventions. Herein a case in point.
Continue reading "Junk Examination"
Posted by Patent Hawk at 5:32 PM | The Patent Office | Comments (105)
September 3, 2009
Healthy Assertion
Martek
and Lonza vend a health supplement made "by extracting lipids from fermented
microorganisms - specifically certain microalgae." Martek owns patents it
asserted against Lonza:
5,340,594;
5,698,244;
6,410,281; and
6,451,567. Some claims were found infringed in district court, and thereupon
the inevitable appeal. Lonza attacked priority date by way of parent enablement;
fought the finding of infringement via questionable testing; argued prior
invention with uncorroborated evidence; and tried to clobber the claim
construction using the file wrapper as a club. Meanwhile, Martek had its own
appeal query: what's an animal?
Continue reading "Healthy Assertion"
Posted by Patent Hawk at 7:25 PM | § 112 | Comments (5)
July 27, 2009
Erased
Was
it pitiable prosecution and excrescent examination, or just deviously scrappy litigation? Blackboard's
6,988,138, claiming an Internet education system, got erased by Desire2Learn
on appeal. Indefiniteness for lacking a backing structure for a means-plus-function
limitation, and a devious claim construction gone awry, left Blackboard with a
failed assertion.
Posted by Patent Hawk at 4:45 PM | Claim Construction
Lever
Bernard Bilski and his buddy got a nebulous notion about risk management. So
they hired a run-of-the-mill prosecutor to scratch a sketchy spec and draft some
bodaciously crappy claims. The PTO pitched the poop. But then the CAFC fouled
the plumbing with precarious precedent, so the Bilski bauble floated to
the top, where the Supreme Court has the final flush, but the only needed motion
is reiteration.
Posted by Patent Hawk at 3:26 PM | § 101 | Comments (13)
July 6, 2009
Not Called Out
4,924,496 claims caller ID, using means-plus-function claims: look up a name
for a number while the phone is ringing. There's a claimed "means for
comparing the detected incoming telephone number with said directory of
telephone numbers to identify the party associated with the incoming call
number." Not exactly rocket science there, even back in 1988 when the patent was
filed. Sued for '496 over its iPhone, Apple wanted summary judgment indefiniteness, for failing to
disclose an algorithm for comparing. Unconvinced, the Massachusetts magistrate
judge on the case blew that off. Tell it to the jury,
she
wrote.
Posted by Patent Hawk at 8:01 PM | § 112 | Comments (5)
June 29, 2009
Requisite Clarity
In
Bilski,
the rogue CAFC ruled on the wrong grounds, and in the process warped the law, by
setting in stone what were intended as guidelines. To afford case-by-case
consideration, a court writes itself wiggle room. Instead, the CAFC tends to sew
itself straightjackets. To invalidate Bilski's claim, all SCOTUS need do is
reaffirm the definiteness requirement, and then correct the CAFC's errant way
regarding patentable process subject matter.
Continue reading "Requisite Clarity"
Posted by Patent Hawk at 9:04 AM | § 101 | Comments (22)
June 26, 2009
Definitely Not
Bilski's
claims
are neither useful nor definite, and hence non-patentable
under §101 and §112 ¶2. The Supreme Court should rightfully ignore flawed CAFC
case law, looking to its own precedents, most notably Diamond v. Diehr
(for §101) and Markman v. Westview Instruments (§112 ¶2). Here's how
SCOTUS should shoot down Bilski and claims of its ilk - recognize the
intertwining of §101 and §112 ¶2, that an ill-defined process is a strong
indicator of indefinite usefulness, and hence unpatentable subject matter.
Continue reading "Definitely Not"
Posted by Patent Hawk at 12:06 AM | § 101 | Comments (34)
June 7, 2009
No Bubbles
The
American anachronism of patent interferences to determine priority often creates
a mess when invoked. And so it was when Affymetrix concocted an interference
against Agilent for a genetic analysis technique involving mixing fluids. The
BPAI gave the prize to Affymetrix, after Agilent couldn't convince the Board
that Affymatrix was playing fast and loose meeting the written description
requirement. Agilent pursued it to district court and lost again, leaving the
CAFC to clean up.
Posted by Patent Hawk at 11:37 PM | § 112 | Comments (1)
June 1, 2009
Air Quality
PureChoice
asserted
RE38,985 against Honeywell. '985 claims an air quality monitoring system.
What exactly is air quality? That was one problem leading to indefiniteness. The
other problem was claiming two different sensors that couldn't be
differentiated. Another careless prosecution kills what otherwise may have been
a quality patent.
Continue reading "Air Quality"
Posted by Patent Hawk at 11:02 PM | § 112 | Comments (4)
April 29, 2009
Corrected Vision
Revolution
Eyewear myopically started a patent fight with competitors, including Contour
Optik. Revolution's assertion went blind, but Contour saw 20/20 money with
RE37,545. On appeal, "the only matter left in this lawsuit is Contour's '545
patent infringement action."
Continue reading "Corrected Vision"
Posted by Patent Hawk at 8:54 PM | § 112
April 5, 2009
Mapping the Territory
A
patent is supposed to be an instruction manual. 35 U.S.C. §112 ¶1 requires an
inventor to describe her invention "in such full, clear, concise, and exact
terms" that it would "enable any person skilled in the art to which it
pertains." Windbags who fail the concise requirement are seldom punished.
Clarity is as often observed in the breach as not, with infrequent repercussion.
Teasing out meaning is tolerated - pointing out obtuse passages for support is
not regarded untoward. But fail "full" or "exact," and you're in a peck of trouble. Herein, a broad claim of an early advance falls short. And in an
invigorating dissenting concurrence, the sin of not enabling enablement.
Continue reading "Mapping the Territory"
Posted by Patent Hawk at 6:22 PM | § 112 | Comments (16)
March 13, 2009
Spiked
The best day for ICU Medical in asserting
6,682,509 against Alaris Medical Systems was the day it filed. '509 claims a
needleless valve, used in medical IVs. Herein, a claim construction saga, with a
written description twist, that finds the district court copasetic and ICU
spiked with patent loss, shelling out for the other side's attorneys fees, and
sanctions.
Posted by Patent Hawk at 8:02 PM | Claim Construction | Comments (11)
November 7, 2008
Lame Blaming About Claiming
CAFC Judge Plager recently mused out loud about claim construction, most
strikingly, his and the court's technical incompetence.
The fundamental problem with claim construction today is that too many claims are no longer describing hammers or machines or other physical objects--though we have had our share of interpretive trouble even with some simple things like what is a "board."
Continue reading "Lame Blaming About Claiming"
Posted by Patent Hawk at 2:02 PM | § 112 | Comments (12)
November 4, 2008
Genus Overclaim
Dr.
Kenneth Alonso lost his appeal for patenting a cancer treatment because, while
he claimed a genus, he had only disclosed some species, and insufficiently so.
Disclosure coverage is at issue when the claimed genus is wide-ranging, and the
disclosed species may not be fully representative. "A patentee of a
biotechnological invention cannot necessarily claim a genus after only
describing a limited number of species because there may be unpredictability in
the results obtained from species other than those specifically enumerated."
Continue reading "Genus Overclaim"
Posted by Patent Hawk at 9:47 PM | § 112 | Comments (7)
October 20, 2008
Means Streets
Net
MoneyIN asserted
5,822,737 &
5,963,917, which go to "systems for processing credit card transactions over
the Internet," against Verisign and other online credit card vendors. The
claims, in the form of means-plus-function, were invalidated because they lacked
specification support. The road to that invalidity is § 112 ¶ 2, indefiniteness, not
§ 112 ¶ 1, the written description requirement. Patents by Mark Ogram, inventor
and patent attorney, turn Shakesperean: "hoist
with his own petar." At least he only has himself to blame. Also herein, the arrangement requirement for anticipation.
Continue reading "Means Streets"
Posted by Patent Hawk at 11:55 PM | § 112 | Comments (5)
October 11, 2008
Effective Filing Date
Technology
Licensing (TLC) went after Gennum for infringing a family of patents going to
video synchronization. The most interesting facet of this case pivoted on patent
priority date. With a continuation-in-part (CIP), a claim is entitled
to the effective filing date of an application that provides written description
support for the claim. The effective filing date becomes an issue when
invalidating prior art exists between the initial parent filing date and the
filing date of a later CIP. Plus, other songs in this dance
hall: "Beast of Burdens of Proof," "Cutting a Bitch on Rule 56," and "Reaching to Delve
With a Thin 112."
Continue reading "Effective Filing Date"
Posted by Patent Hawk at 9:37 PM | Prior Art
September 29, 2008
Tanked
Praxair sued Advanced Technology Materials (ATMI)
for infringing three patents:
6,007,609;
6,045,115; and
5,937,895. All claim pressurized storage tanks. '609 and '115 went down on
inequitable conduct, '895 on §112 ¶2 indefiniteness. On appeal, '609 and '895
popped back up from the grave, while '115 remained buried in a 2-1 split
decision. Herein, the CAFC in full caprice.
Posted by Patent Hawk at 7:44 PM | Inequitable Conduct
September 13, 2008
Going Down the 112 Way
Following up on his
§101 ramble,
USPTO policy maven John
Love put out the hard word in a memo duet on §112: ¶2 indefiniteness for numeric
imprecision, and for means claims, which nominally fall under ¶6.
Continue reading "Going Down the 112 Way"
Posted by Patent Hawk at 10:28 PM | Prosecution | Comments (1)
September 8, 2008
Written Description Bug
5,126,270
and continuation
6,017,745, claim turning bacteria into enzyme factories. Patent owner
Carnegie Mellon University sued Roche for infringement. Roche got a
claim construction that led to summary judgment of non-infringement, and
invalidity for "lack of written description in light of...
Regents of University of California v. Eli Lilly", with
Gentry
Gallery v. Berkline riding shotgun. On appeal, the CAFC met the written
description requirement on meeting the written description requirement. And
relegated to the unremarkable the earlier § 112, ¶ 1 ruling,
Gentry Gallery.
Continue reading "Written Description Bug"
Posted by Patent Hawk at 10:28 PM | § 112
August 25, 2008
Prove It
In
a touchstone ruling, Star Scientific v. R.J. Reynolds, the CAFC resets
the high bar for inequitable conduct:
The burden of proving inequitable conduct lies with the accused infringer. The patentee need not offer any good faith explanation unless the accused infringer first carried his burden to prove a threshold level of intent to deceive by clear and convincing evidence. If a threshold level of intent to deceive or materiality is not established by clear and convincing evidence, the district court does not have any discretion to exercise and cannot hold the patent unenforceable regardless of the relative equities or how it might balance them. Even if a threshold level of both materiality and intent to deceive are proven by clear and convincing evidence, the court may still decline to render the patent unenforceable.
Posted by Patent Hawk at 2:15 PM | Inequitable Conduct | Comments (2)
June 27, 2008
Incensed
Fargo
Electronics sued IRIS for infringing
5,755,519 and
6,152,625, which claim a ribbon type sensor for a printer. IRIS sells
replacement ribbons compatible with Fargo printers. A couple of claims fell on
the reasonable repair doctrine. Incompetent prosecution, resulting in indefinite
claims, killed the rest of the assertion.
Posted by Patent Hawk at 5:50 PM | § 112
May 28, 2008
Another Piece
Most junk patents are created by incompetent prosecutors,
with an assist from incompetent examiners granting bad claims. Example in point -
Arthur A. Collins got a couple of junk patents:
4,701,907 and
continuation
4,797,589. '907 sunk by §112 ¶2,
an unconstruable claim term. '589 down on non-infringement over missing a
limitation, and claims "invalid for improper reexamination amendment." Appeal
offered no real reprieve.
Continue reading "Another Piece"
Posted by Patent Hawk at 1:16 AM | Litigation
May 23, 2008
Puckered
John
Wong got
5,568,779 for TALtech, claiming a seam for wash-and-wear dress shirts that
don't pucker when laundered. Wong didn't disclose all the prior art he knew of,
including the prior art that was the inspiration for his invention. The district
court found inequitable conduct. The appeals court starches that shirt: "If the
material is cumulative to other disclosed material, as a matter of law, the
inventor is not obligated to disclose it." And, a lesson on best mode.
Posted by Patent Hawk at 1:52 AM | Inequitable Conduct | Comments (5)
April 26, 2008
21st Century Schizoid Everyman
Sitrick v.
Dreamworks stirred
muddy water.
Marc Brown of
McDermott Will & Emery worries: "Without
realizing it, a recent series of Federal Circuit decisions has established a
standard for enablement that may arguably be higher than any patent can meet."
Is the concern justified? Why hasn't enablement had a head-on collision with its
alter ego behind obviousness and the doctrine of equivalents?
Continue reading "21st Century Schizoid Everyman"
Posted by Patent Hawk at 3:40 PM | § 112 | Comments (4)
April 22, 2008
Antecedent Basis
They
killed the bunny patent. It's enough to make you cling to your guns and
religion. Energizer tried to zap Chinese battery makers using the ITC,
but the ITC pulled the plug. Twice. On appeal, a non-precedential decision,
owing to all-around discord in the panel. A badly drafted claim loses its juice
on antecedent disconnect.
Continue reading "Antecedent Basis"
Posted by Patent Hawk at 1:17 AM | § 112 | Comments (3)
April 14, 2008
CIP Junk
PowerOasis had a dysfunctional family of patents, notably
6,466,658 and
6,721,400. The patents claim telecommunications access via a vending
machine. PowerOasis went after T-Mobile, who successfully broke the family
lineage, that these CIP children weren't entitled to their parent's birth date.
On appeal, the written description requirement is recited as part and parcel of
determining priority date for a CIP. There is no presumption that a CIP is
entitled to an earlier filing date.
Posted by Patent Hawk at 1:10 AM | Claim Construction | Comments (4)
March 30, 2008
An Algorithm Shy
Australia-based Aristocrat
threw away money getting gaming machine patent
6,093,102, and then threw away money trying to enforce it.
Means-plus-function with no unction. From the CAFC, a
crash course in means-plus-function claims for computers: the claimed function
is bounded by the specifically disclosed algorithm. Lacking an algorithmic
tether, a means-plus-function processor claim is indefinite.
Continue reading "An Algorithm Shy"
Posted by Patent Hawk at 1:02 AM | § 112 | Comments (11)
March 29, 2008
Mixed Claim Types
Both the USPTO and the courts proscribe
claims mixing statutory claim classes
as both unpatentable subject matter under
§101 and indefinite under
§112 ¶2.
But, as is often the case with claim construction, the line may seem fuzzy.
Herein a guide.
Continue reading "Mixed Claim Types"
Posted by Patent Hawk at 12:11 AM | Claim Construction | Comments (3)
February 22, 2008
Factual Fiction
For
now, the CAFC retains a polite fiction: "We review claim construction de novo on
appeal. Cybor Corp. v. FAS Tech., Inc., 138 F.3d 1448, 1456 (Fed. Cir.
1998) (en banc);" de novo because claim construction is considered a matter of
law, not a factual inquiry. In today's Aristocrat nonprecedential reversal and
remand, summary judgment of indefiniteness in claim construction was ruled in
error because "genuine issues of material fact remained pertinent."
Continue reading "Factual Fiction"
Posted by Patent Hawk at 2:38 PM | § 112
February 10, 2008
Black Hole of Enablement
Enablement
was spun into a black hole of uncertainty by the CAFC in
Sitrick v.
Dreamworks, which expanded the enablement requirement at least to
the degree that an accused product must be a disclosed embodiment for a claim to
be enabled. Hal Wegner: "In essence, Sitrick voids any generic claim that
is fully enabled as to a preferred embodiment, but includes other
embodiments not yet enabled." Can a patent now be invalidated by showing any
undisclosed embodiment within the scope of a claim?
Continue reading "Black Hole of Enablement"
Posted by Patent Hawk at 11:15 PM | § 112 | Comments (3)
February 1, 2008
Voiceover
David
Sitrick sued movie makers DreamWorks and Warner Brothers for infringing
5,553,864 and
6,425,825, which claim integrating a user's voice or imagery into a
pre-existing video game or movie. The district court process was fitful, but the
judge granted summary judgment: invalidity for lack of enablement for movies,
though having no problem with enablement for video games. The CAFC affirmed.
Posted by Patent Hawk at 1:34 PM | § 112
January 29, 2008
Holey Bone
Trimed
sued Stryker for infringing its bone fracture fixer patent:
5,931,839. Claim construction fractured the assertion, resulting in a
noninfringement summary judgment. Trimed had the misconstruction mended on
appeal. The spat was over the structure of a hole.
Posted by Patent Hawk at 5:47 PM | § 112
January 25, 2008
Indefinite Drilling
Halliburon
sued M-I for infringing
6,887,832, claiming oil drilling using fragile gels for drilling fluid. The
problem was that "fragile gel" was ill-defined, leading to invalidity under
35 U.S.C. § 112, ¶ 2. Irresolvable ambiguity to one skilled in the art is
the yardstick of indefiniteness. The CAFC pens a claim construction classic on
delineation of claim term definiteness.
Continue reading "Indefinite Drilling"
Posted by Patent Hawk at 1:50 PM | § 112
November 29, 2007
New Matter
Paul Lew and Jason Schiers
dreamed up a wheel hub with a clutch, for bicycles,
which allowed free wheeling when not pedaling, but instantly engaged when
pedaling. The torque
transfer was "through a multitude of ball bearings." Lew got
6,644,452 for it.
Prosecuting the continuation, he canceled his original claims and submitted a
substitute specification, essentially identical, except replacing "ball
bearings" with "curved members," and "pockets" with "slots," both new terms. The
examiner balked.
Posted by Patent Hawk at 9:58 PM | § 112 | Comments (1)
October 26, 2007
Sinking Surfactant
6,593,318
& divisional
6,593,320, owned by Par Pharmaceuticals, "relate to stable flocculated
suspensions of megestrol acetate and methods for making such suspensions." Par's
patented work sprung from trying to design around
5,338,732, owned by Bristol-Myers Squibb. In the event, Par sued Roxanne for
infringement. Roxanne got a district court summary judgment of invalidity via
lack of enablement (§112 ¶1) because the claims were so broad. Par futilely appealed.
Continue reading "Sinking Surfactant"
Posted by Patent Hawk at 1:15 PM | § 112
September 24, 2007
Without Means
Means claims have been problematic for years;
many prosecutors avoid the means-plus-function claim form altogether, as means claims are
tightly bound to the specification. Courts have often limited doctrine of equivalents application for means claims,
even though DOE is statutorily bona fide. But
sometimes there's an even more fundamental problem. Maurice Mitchell found out
what that was.
Continue reading "Without Means"
Posted by Patent Hawk at 2:39 PM | § 112
September 6, 2007
Totaled
ATI
sued a bevy of car makers for infringing
5,231,253, which claimed a velocity sensor for detecting side impacts. The
defendants drove a frontal assault: that the claims were invalid for failing
to meet the written description requirement of
35 U.S.C. § 112, ¶ 1, and lack of
enablement. The patent crashed.
Posted by Patent Hawk at 3:13 PM | § 112
June 27, 2007
Cat's Claw
William
Young patented a surgery procedure for removing cat claws. In suing Lumenis for
infringing, the district court ruled in summary judgment the asserted patent
indefinite under
35 U.S.C. § 112, ¶ 2, over the claim term "near," and unenforceable for
inequitable conduct, in part because Young was tardy giving the patent office a
litigation deposition during reexamination, though timely enough for the
examiner to consider its import. Young successfully appealed. (CAFC
06-1455)
Posted by Patent Hawk at 1:07 PM | Claim Construction
June 25, 2007
Strategic Misdecision
MicroStrategy
sued Business Objects for infringing three patents related to decision support
software. In an affirmation of what Hal Wegner called "an unforgiving trend of finding
against a patent owner’s sloppy use of the English language," summary judgment
of noninfringement and invalidity were upheld (CAFC
06-1320).
Continue reading "Strategic Misdecision"
Posted by Patent Hawk at 4:57 PM | § 112
June 18, 2007
Tripping
Biomedino
appealed an indefiniteness ruling for claims of its asserted
6,602,502 against Waters Technologies. '502 went to detecting psychoactive drugs in the blood. While the courts differed on the applicable
paragraph, Biomedino's patent trip turned out to be a bummer.
Posted by Patent Hawk at 11:30 AM | § 112
March 22, 2007
Pressure Drop
Liebel asserted four patents against Medrad. In the second appeal of the
litigation, the appeals court (CAFC
06-1156) concurs with a
district court ruling that Liebel had not enabled broadened claims in two of the
four patents, thus invalidating the patents under
35 U.S.C. § 112, ¶ 1.
Liebel had broadened its claims to ensnare Medrad, and so tripped itself up over
its own greed. The full scope of claims must be enabled. As the CAFC tooted:
"The motto, “beware of what one asks for,” might be applicable here." Concurring
again with the district court, the other two asserted patents were found invalid
by prior art; cited prior art; in summary judgment, with no factual dispute.
Continue reading "Pressure Drop"
Posted by Patent Hawk at 10:29 PM | § 112
June 1, 2006
Sludge Match
Liquid
Dynamics (LD) sued Vaughan Company
for infringing
5,458,414. In the first round, LD successfully appealed an erroneous claim
construction. Upon remand, a district court trial found Vaughan willfully
infringed, and then in a subsequent bench trial, trebled damages and awarded
attorneys fees because of "Vaughan’s behavior as a litigant," as well as then
issuing a permanent injunction. Naturally, Vaughan appealed (CAFC
05-1105).
Continue reading "Sludge Match"
Posted by Patent Hawk at 2:16 PM | Case Law
January 9, 2006
Claim Scope Per Disclosure Redux
LizardTech got its wavelet compression patent dubbed by the CAFC (05-1062 panel) for overreaching in its claim beyond its specification, when only one embodiment had been disclosed. So, desperate, LizardTech appealed for an en banc hearing (05-1062 en banc); request denied. But in its snub, the CAFC put on a little fireworks show between the ruling majority and dissenters.
Continue reading "Claim Scope Per Disclosure Redux"
Posted by Patent Hawk at 12:09 AM | § 112
November 28, 2005
PBAI Claim Mixup
In a non-precedent case before the Patent Board of Appeals (PBAI 2005-0970), Xerox got a copy of the IPXL v. Amazon ruling: mixing claim types traverses 35 U.S.C. § 101 & § 112 ¶ 2.
Continue reading "PBAI Claim Mixup"
Posted by Patent Hawk at 12:34 PM | Prosecution
November 21, 2005
Don't Mix Claim Types
IPXL
Holdings assertion of patent infringement against Amazon.com for its one-click
checkout didn't click with the courts. What especially missed the click track
was tacking a method onto a system claim.
MPEP § 2173.05(p)(II): "A single claim which claims both an apparatus and
the method steps of using the apparatus is indefinite under
35 U.S.C. 112, second paragraph."
Continue reading "Don't Mix Claim Types"
Posted by Patent Hawk at 2:17 PM | § 112
November 4, 2005
Definitely Swinging
Fisher-Price
sued Graco Children's Products, and its parent, Newell Rubbermaid, for patent
infringement regarding a collapsible infant swing (6,520,862).
The district court threw the case out in summary judgment owing to the asserted
claims being indefinite. The appeals court (CAFC
05-1258) had a
different swing, giving the patent holder the benefit of the doubt in readily
understood technology.
Continue reading "Definitely Swinging"
Posted by Patent Hawk at 1:12 PM | § 112
October 31, 2005
Nuts
Michael
Callicrate of St. Francis Kansas is nuts about castrating cattle, having amassed
5,236,434,
5,997,553 and
5,681,329 to prove it. And he tried to put the squeeze on Wadsworth
Manufacturing for infringement, but couldn't loop them in district court. The
CAFC said that the lower court ruling was bull (04-1597).
Posted by Patent Hawk at 10:44 AM | § 112
September 19, 2005
On Track
5,110,046 claims a railroad track fastening system. "Specifically, the patent
claims a rail seat assembly that resists erosion of the concrete rail tie by
interposing an abrasion-resistant plate and a layer of adhering material between
the rail pad and the rail."
Pandrol, having purchased '046, sued Airboss for infringement. In a case involving two issues: § 112 and assignor estoppel, the CAFC (04-1069) affirmed the district court's summary judgment.
Posted by Patent Hawk at 11:52 AM | § 112
August 14, 2005
Chimeric Interference
Another first-to-invent catfight, but with some interesting insights into the written description requirement (§112 ¶1). The CAFC (03-1480) ruled in a patent interference appeal among Capon (appellant) v. Eshhar (cross-appellant) v. Dudas (PTO Director).
Continue reading "Chimeric Interference"
Posted by Patent Hawk at 7:14 PM | § 112
August 5, 2005
Indefinite Claiming
In Datamize LLC v. Plumtree Software Inc. (Fed. Cir. 05 August 2005; 04-1564), the Federal Circuit affirmed the district court’s grant of summary judgment of invalidity of all claims of Patent No. 6,014,137 pursuant to 35 USC U.S.C. § 112, ¶ 2 as indefinite due to the claim term “Aesthetically pleasing” as found in the only independent claim.
Continue reading "Indefinite Claiming"
Posted by Peter Haas at 12:04 PM | § 112
July 25, 2005
Overcoming §112 ¶ 2 Rejection
35 U.S.C. §112 ¶ 2: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."
Process/method claim rejections may be off-base if the rejection complaint is that the claimed method is not enabling, or even that the claimed method is not self-sufficiently comprehensible.
Continue reading "Overcoming §112 ¶ 2 Rejection"
Posted by Patent Hawk at 12:05 AM | Prosecution | Comments (1)
April 20, 2005
§112 Rocket Science
Space Science/Loral received a patent (4,537,375) for saving fuel in rocket thrust maneuvers to maintain orientation and attitude of a satellite in space. Gravitational tugs by the earth, sun, and moon require positional adjustments. Things just don't sit still in space.
The claimed maneuver was a two-step process: fire thrusters once, consider what that did, then adjust if necessary. Lockheed convinced the district court in a summary judgment motion that there was not sufficient disclosure of the considering and adjusting portions of the claim. The Court of Appeals fired their thrusters with a different attitude.
Continue reading "§112 Rocket Science"
Posted by Patent Hawk at 6:49 PM | § 112
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