June 2, 2014
The CAFC's long-standing standard of indefiniteness - that a patent claim was definite unless "insolubly ambiguous" - has been a unreasonable evisiceration of statute. In Nautilus v. Biosig (13-369), the Supreme Court put reason back in.
To tolerate imprecision just short of that rendering a claim 'insolubly ambiguous' would diminish the definiteness requirement's public-notice function and foster the innovation-discouraging 'zone of uncertainty'. A patent is invalid for indefiniteness if its claims, read in light of the patent's specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. [A] patent must be precise enough to afford clear notice of what is claimed. The standard adopted here mandates clarity, while recognizing that absolute precision is unattainable.
Posted by Patent Hawk at 4:05 PM | § 112
May 11, 2014
Double Standard of Indefiniteness
The CAFC has long maintained that granted claims are definite under §112(b) unless "unsoluably ambiguous." On May 6, the CAFC decided something different with regard to definiteness during prosecution. They could have waited, as the Supreme Court will decide, within a month or so, how claim definiteness should be construed. In re Packard (2013-1204), a CAFC panel declared that a prosecution claim is indefinite if an examiner says so, sui generis, without consideration of the specification. This is contrary to black-letter law, and, recently, the CAFC's own ruling in Energizer Holdings v. ITC (CAFC 2006) ("The definiteness inquiry 'focuses on whether those skilled in the art would understand the scope of the claim when the claim is read in light of the rest of the specification'").
Posted by Patent Hawk at 11:34 PM | § 112
November 4, 2013
Synthes went after Spinal Kinetics over 7,429,270, which claims an artificial spinal disc. In dissent over claim construction and written description, where the CAFC affirmed the district court's damning the patent, fledgling Judge Taranto demonstrates the easy corruption of U.S. courts.
Posted by Patent Hawk at 4:16 PM | § 112
January 26, 2013
Ernie Ball v. Earvana presents episodic ineptness by a patent prosecutor, examiner, litigators and district court judge. 6,433,264 claims "a compensated nut for a stringed instruments," as a means for tuning for "fixed intonation portions [that] does not form a sinusoidal arc."
Posted by Patent Hawk at 12:43 AM | § 112
November 22, 2012
The caprice of the courts is one of two main reasons that the U.S. patent system is terminally broken. The other cause is of course the USPTO: a cesspool of incompetence, as evidenced by how few granted patents legally claim actual invention, and the multitude of applications that linger in examination for up to a decade or more. ePlus v. Lawson illustrates how unpredictable the courts are, as well as how unjust the CAFC is.
Posted by Patent Hawk at 2:11 PM | § 112
November 13, 2012
35 U.S.C §112 ¶1 requires that claimed invention be reduced to practice; that is, described in the patent specification such that one of skill in the relevant art area would be able to read the patent and implement the invention. Without this requirement, shambolic specifications would confer patents on rough ideas rather than practical inventions. Hence, evisceration of the written description requirement would make a mockery of the law, and the very purpose of the patent sanction. The courts don't see it that way.
Posted by Patent Hawk at 3:41 PM | § 112
August 14, 2012
The CAFC again limits patent protection without basis in statute. Under government grant, MIT developed a device, usable as a sensor or computer memory, employing quantum mechanical effects; patented as 5,629,922. Exclusive licensee Masgil and MIT launched an enforcement campaign against 20+ disk drive makers. In summary judgment, the district court found '922 not enabled, for the sin of being too valuable a patent. A CAFC panel affirmed.
Posted by Patent Hawk at 10:14 PM | § 112
April 9, 2012
5,875,435 claims an automated accounting system. '435 owner Noah Systems sued Intuit for infringement. Intuit got the litigation stayed pending reexam. Reexam by "the PTO confirmed the patentability of the original claims of the '435 patent and determined that new claims 19-56 were patentable." With litigation restarted, Intuit sold the district court on the illicit idea that the claimed "access means" were indefinite under §112 ¶2 "because the specification disclosed no algorithm by which the computer was programmed to perform the function asserted in the claims." By law, that failing would be written description, §112 ¶1. But the fix was in, and that was all that mattered. The district court ignored that the claimed "access means" referred to entering a passcode, which was well-documented in a figure and written description, as court documents showed. Affirmed on appeal. (CAFC 2011-1390). One more chip on a mountainous pile showing blatant patent court corruption favoring well-regarded companies over patent holders.
Posted by Patent Hawk at 11:37 AM | § 112
March 27, 2012
5,507,412 claims a system to deliver fluids from multiple sources into a patient's body. An adjusting means is claimed to influence the fluid flow from each source. There is a claimed programmable control means coupled with the adjusting means. In the disclosure, the functions of what the control device does are variously mentioned, but how the control device functions is never described. '412 owner Ergo sued CareFusion for infringement. Under the influence of 112 ¶ 2 by way of § 112 ¶ 6, the "district court held that the 'control means' terms are indefinite for failure to disclose corresponding structure." The CAFC affirmed. (CAFC 2011-1229). Should have been euthanized by 112 ¶ 1. The claim was definite enough, but lacked written description.
Posted by Patent Hawk at 10:28 AM | § 112
February 1, 2012
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.
Posted by Patent Hawk at 11:15 PM | § 112
January 24, 2012
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
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
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.
Posted by Patent Hawk at 1:00 PM | § 112
August 26, 2011
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
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.
Posted by Patent Hawk at 9:13 PM | Prior Art
June 15, 2011
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.
Posted by Patent Hawk at 3:09 PM | § 112
May 2, 2011
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.
Posted by Patent Hawk at 9:28 PM | Exhaustion
April 1, 2011
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.
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.
Posted by Patent Hawk at 10:18 PM | § 112
February 19, 2011
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.
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."
September 23, 2010
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."
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.
Posted by Patent Hawk at 8:45 PM | § 112
September 10, 2010
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.
September 4, 2010
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.
July 6, 2010
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.
June 2, 2010
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.
May 26, 2010
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.
April 27, 2010
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.
April 13, 2010
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.
April 4, 2010
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.
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.
February 27, 2010
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.
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.
September 27, 2009
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.
Posted by Patent Hawk at 1:30 PM | § 112
September 4, 2009
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.
September 3, 2009
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?
July 27, 2009
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
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.
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.
June 29, 2009
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.
June 26, 2009
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.
June 7, 2009
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.
June 1, 2009
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.
April 29, 2009
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."
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.
March 13, 2009
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.
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."
November 4, 2008
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."
October 20, 2008
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.
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."
Posted by Patent Hawk at 9:37 PM | Prior Art
September 29, 2008
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.
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.
Posted by Patent Hawk at 10:28 PM | § 112
August 25, 2008
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.
June 27, 2008
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
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.
Posted by Patent Hawk at 1:16 AM | Litigation
May 23, 2008
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.
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?
April 22, 2008
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.
April 14, 2008
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.
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.
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.
February 22, 2008
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."
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?
February 1, 2008
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
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
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.
Posted by Patent Hawk at 1:50 PM | § 112
November 29, 2007
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.
October 26, 2007
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.
Posted by Patent Hawk at 1:15 PM | § 112
September 24, 2007
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.
Posted by Patent Hawk at 2:39 PM | § 112
September 6, 2007
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
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
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).
Posted by Patent Hawk at 4:57 PM | § 112
June 18, 2007
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
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.
Posted by Patent Hawk at 10:29 PM | § 112
June 1, 2006
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).
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.
Posted by Patent Hawk at 12:09 AM | § 112
November 28, 2005
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."
Posted by Patent Hawk at 2:17 PM | § 112
November 4, 2005
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.
Posted by Patent Hawk at 1:12 PM | § 112
October 31, 2005
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
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
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).
Posted by Patent Hawk at 7:14 PM | § 112
August 5, 2005
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.
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.
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.
Posted by Patent Hawk at 6:49 PM | § 112