June 13, 2014
The CAFC, like other courts, decides how to rule, then fits the law to suit the ruling. The same judges on a CAFC panel that were at diametric ends over the same issue in Allergen v. Apotex were happy to affirm an obviousness finding of the district court in Bristol-Myers Squibb v. Teva. In doing so, it summarized case law in this area, if only in this case.
Posted by Patent Hawk at 2:56 PM | Prior Art
June 12, 2014
The CAFC continues its rampage against the rule of law. In Allergan v. Apotex (CAFC 2013-1245), a panel finds obviousness over the very reference the USPTO carefully considered (Johnstone), finding the reference "does not teach away," and that "there was nothing left for a chemist to do." In dissent, Judge Chen notes: "This is not a situation in which there are a finite number of identified, predictable solutions. Rather, the single sentence in Johnstone actually proposes hundreds of thousands, or even millions, of variations." Thus, the panel majority - new Chief Judge Prost and Judge Reyna - ignores the repeated precedence of KSR, Ruschig, Eli Lilly and others to achieve a new level of caprice.
Posted by Patent Hawk at 8:15 AM | Prior Art
April 14, 2014
Hoffmann-La Roche got 7,718,634 & 7,410,957, which claimed a dosing regime for treating osteoporosis. Against the law, the district court and a CAFC panel (2013-1128) found the patents obvious by now-routine hand-waving. Judge Newman dissented over "this court invoking judicial hindsight to reconstruct the patented subject matter." Outliers aside, the anti-patent regime continues apace.
Posted by Patent Hawk at 12:30 AM | Prior Art
February 15, 2014
The lawlessness of the CAFC continues unabated. In Solvay v. Honeywell (CAFC 2012-1660), the court illicitly finds for a domestic company over a foreign rival. In dissent, Judge Newman observes:
The court today creates a new class of secret prior art, holding that a privately performed experiment, without publication or public knowledge or use or sale or inclusion in a United States patent application, is invalidating "prior art." Heretofore the role of secret prior art has been carefully circumscribed. The new general rule here adopted contravenes the policy and the letter of patent law, wherein inventors are charged only with knowledge of what is known or knowable as defined by statute, subject to special limited circumstances.
Posted by Patent Hawk at 2:52 PM | Prior Art
December 4, 2013
Single Amputation Kills Whole Family
Ohio Willow Wood came up with some patented designs for cushions over amputated limbs. One was amputated during litigation-related reexam. That was enough to effectively kill the whole family. "Collateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent. Our precedent does not limit collateral estoppel to patent claims that are identical. Rather, it is the identity of the issues that were litigated that determines whether collateral estoppel should apply." (CAFC 2013-1642)
Posted by Patent Hawk at 3:47 PM | Prior Art
October 30, 2013
7,214,017 was shipped into reexamination by a competitor to its owner: Randall Manufacturing. While the examiner rejected numerous claims, the patent board couldn't see a motivation to combine references. But the CAFC could, finding the failure to do so "a blinkered focus."
Posted by Patent Hawk at 9:46 PM | Prior Art
October 13, 2013
Broadcom nailed Emulex for infringing 7,058,150, claiming a data transceiver. On appeal, the CAFC twisted now canonical case law regarding obviousness handed down by the Supreme Court in KSR v. Teleflex (2007). Thus the CAFC continues to build self-contradictory case law.
Posted by Patent Hawk at 11:40 PM | Prior Art
August 18, 2013
The CAFC has become so inured to blithe invalidation of patents that the finer points of law no longer matter. In a dust-up between rivals Hamilton Beach and Sunbeam, HB's 7,947,928 slow-cooker patent was invalidated under the on-sale bar of § 102(b). Yet, as the dissent pointed out, the supposed invalidating action was not the requisite commercial offer for sale.
Posted by Patent Hawk at 1:56 PM | Prior Art
July 10, 2013
Blind Pig & The Acorn
The CAFC concocted the "substantial evidence" standard so as to ignore appeals from PTO Board rejections. Rare is the instance when the appeals court will exercise otherwise. But in Smith & Nephew v. Synthes (CAFC 2012-1343), as part of the CAFC's proclaimed war on patents, a panel took the opportunity to invalid a patent, via excruciatingly detailed analysis, that the Board had wondrously found non-obvious. The claimed invention was clearly an incremental improvement at best. And it looks like the PTO Board was simply asleep at the switch on this one.
Posted by Patent Hawk at 10:47 PM | Prior Art
July 4, 2013
Many patents largely invalidate themselves. That comes in vice created between the prior art statutes (§102 and §103) and the written description requirement(§112 (a)). Patent backgrounds typically confess their technological pedigree. This is explicit admission of prior art. But by not bothering with enabling disclosure of claimed features, a specification makes an tacit admission that it is merely claiming the prior art.
Posted by Patent Hawk at 1:43 PM | Prior Art
June 22, 2013
The CAFC continues to astonish. Novo Nordisk v. Caraco yielded a 2-1 decision of chemical obviousness. The majority contravenes a well-established trail of precedents, dating at least to In re Papesch (1963). Judge Newman, in dissent, feels the need to remind her colleagues of "real world considerations."
Posted by Patent Hawk at 1:27 AM | Prior Art
January 7, 2013
In re Chevalier (CAFC 2012-1254) is a garden-variety affirmation of obviousness, where hindsight motivation was used to combine prior art references to solve the problem of the claimed invention. "The Supreme Court stated in KSR that "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.'" Further, under its recent "substantial evidence" standard, the CAFC continues to make clear that some egregious error must be evident for it to give any traction to denying the USPTO its purview.
Posted by Patent Hawk at 11:34 PM | Prior Art
December 27, 2012
Outside the Box
The heart of the problem with patents lies with obviousness. Before Obzilla came to town, some scintilla of indication in the prior art had to exist before a claim could be considered obviousness. KSR v. Teleflex reset obviousness calibration to incorporate subjective evaluation; to read between the lines of prior disclosure. No longer being beholden to facts invariably opened the door to hindsight reasoning and adjudication bias, which has been a large part of the legacy of KSR. That withstanding, the problem remains how as to how far "common sense" and ethereal predictability should go as a matter of law. In C.W. Zumbiel v. Kappos, a CAFC panel doesn't go far enough, as the dissent points out.
Posted by Patent Hawk at 4:54 PM | Prior Art
November 18, 2012
Transocean got patents on an oil drilling rig, particularly the drill bit. In the first appeal of its assertion against Maersk, the CAFC found that the patents were obvious in light of two references: "Horn and Lund teach every limitation of the asserted claims and provide a motivation to combine their respective teachings." But on the second appeal, the CAFC reversed itself, that the patents weren't obvious, because Transocean had commercial success.
Posted by Patent Hawk at 10:06 PM | Prior Art
November 14, 2012
The core concept behind rule of law is that evidence is required to make a determination. Rule of law is turned into a sham when courts have the power to arbitrarily decide matters based upon their own bias. That sham is exactly what patent law (using the term "law" loosely) became with the 2007 Obzilla ruling by the Supreme Court (KSR; Obzilla a portmanteau for the Godzilla of obviousness). This week's episode involves a hand-waving incantation of obviousness by the ITC, affirmed by the CAFC...
Posted by Patent Hawk at 1:51 PM | Prior Art
September 21, 2012
Obzilla reaps another victim. Peter Droge and his cohorts thought they invented a DNA recombination technique. But a combination of a prior art patent and an article by two of the three applicants made the technique obvious, the patent board ruled, to which a CAFC panel agreed (CAFC 2011-1600). There was no argument over the evidence prima facie, only about what was reasonable. The inventors argued that similar work in prokaryotic cells "would not lead a skilled artisan to expect" the same result in eukaryotic cells. This argument was solidly backed by the prior art prokaryote workers teaching away: the relevant protein co-factors are present in prokaryotic cells, but not eukaryotic cells. But the CAFC is beyond reason in applying hindsight, and in backing the PTO if "a reasonable mind might accept as adequate to support a conclusion." In other words, facts just don't matter that much. To the CAFC and the USPTO nowadays, science is merely a matter of opinion. "'Obviousness does not require absolute predictability of success... all that is required is a reasonable expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988))." Case-by-case subjectivity is now called rule of law.
Posted by Patent Hawk at 10:02 PM | Prior Art
July 2, 2012
In pursuit of a "crossbar arithmetic processor" patent, Blaise Laurent Mouttet provided another lesson in the way of Obzilla: any possible combination of known features is not patentable, even when the prior art technologies are not compatible. Mouttet envisioned an arithmetic processor using a crossbar structure. He cited a prior art publication, Das, that disclosed a "nanoscale crossbar array with molecular switches." The examiner found Falk (5,249,144), which taught a "programmable optical arithmetic/logic device," and Terepin (4,633,386), an analog-to-digital (A/D) converter. The examiner put them together to fabricate Mouttet's claimed invention, a rejection affirmed by the PTO appeals board and CAFC.
Posted by Patent Hawk at 12:38 PM | Prior Art
June 22, 2012
Wrigley sued Cadbury over its menthol gum patent, 6,627,233. Cadbury counterclaimed with 5,009,893. Wrigley was found not chewing into '593 (noninfringement). Then Wrigley got hit a lick on its own mentholated stick. '233 was found anticipated and obvious; judgment affirmed on appeal (CAFC 1201-1140,-1150; precedential). In dissent, Judge Newman stepped on that sticky wad. "The district court erred in holding the '233... obvious on only part of the evidence, ignoring the evidence that supports unobviousness... The district court also granted summary judgment of invalidity on the ground of anticipation, not relying on any reference cited for obviousness, but relying on a different reference that does not show the claimed combination at all, but merely presents the ingredients on lists." Rule of law is gummed up at the CAFC (and in courts across the country). Chew on that.
Posted by Patent Hawk at 4:33 PM | Prior Art
June 3, 2012
Marcus and Neil Mintz invented a sausage claimed in 5,413,148. Distributor-turned-competitor PCM smartly filed a DJ and smoked Mintz's meat over a short order cooking of summary judgement non-infringement and invalidity. On appeal, the CAFC decided it was time for a new sketch of Obzilla.
Posted by Patent Hawk at 11:17 AM | Prior Art
May 28, 2012
The theft of intellectual property by the USPTO and CAFC continues unabated. This episode concerns 6,168,626, found obvious in reexam and by a CAFC panel majority (CAFC 2011-1239). Sadly for the co-conspirators, a few on the court inclined to rule of law continue to speak out. Judge Newman, in dissent, is one: "The Hyon procedure and its effects are not shown or suggested in any reference, despite the long history and extensive scientific studies of all forms of polyethylene... The prior art contains no 'apparent reason to combine the known elements in the fashion claimed by the patent at issue.' KSR Int'l Co. v. Teleflex Inc. , 550 U.S. 398, 418 (2007). The Board reasoned backward from the Hyon method."
Posted by Patent Hawk at 10:10 AM | Prior Art
May 22, 2012
Hong-Jiun Gu and Jar Chen Wang got 6,722,674, claiming a scooter with safety wheels. On inter partes reexam, the examiner rejected claims as obvious, which the Board overturned. The aggrieved party appealed to the CAFC (2011-1570), which found, with blithe subjectivity, that the patent was obvious. "When there exists a finite number of identified, predictable solutions to a known problem, a combination that results in 'anticipated success' is likely the product not of innovation, but of ordinary skill and common sense. That is the case here."
Posted by Patent Hawk at 12:34 PM | Prior Art
May 7, 2012
In a close-call case, Otsuka v. Sandoz et al (CAFC 2011-1126, 1127, precedential), generic drug makers couldn't invalidate 5,006,528, for lack of identifying a prior art lead compound to derive the patented drug, even under the highly subjective standard of Obzilla. "In keeping with the flexible nature of the obviousness inquiry, the reason or motivation for modifying a lead compound may come from any number of sources and need not necessarily be explicit in the prior art." The ruling also gives a nuanced reading of nonstatutory double patenting. Here too, the subjectivity of "unpredictability" plays a lead role. The contours of obviousness continue to be a case-by-case guessing game.
Posted by Patent Hawk at 9:15 PM | Prior Art
April 19, 2012
In re Mousa, a chemical compound prosecution, the CAFC affirmed anticipation by inherency. "[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citations omitted). Applicant failed to prove what could not be proven - that the PTO's unsubstantiated conjecture was wrong. Rejection without direct evidence was copasetic (inherent redox reaction), but "appellant's unsupported statements... are not sufficient evidence to rebut the examiner's contention." In re Hoke, 560 F.2d 436, 438 (C.C.P.A. 1977).
Posted by Patent Hawk at 3:12 PM | Prior Art
March 10, 2012
In re PepperBall Technologies, where patents were found obvious during reexam, the CAFC affirmed, as it "upholds the Board's fact findings supported by substantial evidence, 5 U.S.C. § 706." "Whether an invention would have been obvious is a legal question. What a reference teaches and whether a person with ordinary skill in the art would have been motivated to combine the teachings of separate references are questions of fact." (CAFC 2011-1137). Under the substantial evidence standard of review, the CAFC must affirm the PTO if there is substantial evidence to support the agency, even if the CAFC would otherwise disagree.
Posted by Patent Hawk at 10:28 PM | Prior Art
March 6, 2012
GraphOn had patents on network database transactions valuable enough for MySpace to get the jump with a DJ action. Craigslist and Fox Network piled in. These upstanding companies had enough credibility with the district court judge to invalidate the patents in summary judgment without so much as a decent claim construction. On appeal, a CAFC panel lamented the slack claim work, but affirmed with nothing more than handwaving dismissal of GraphOn's objections to being railroaded.
Posted by Patent Hawk at 10:18 PM | Prior Art
February 19, 2012
Less Than Lesson
Clearvalue sued Pearl River Polymers for indirectly infringing 6,120,690, which claims a process for clarifying water. A jury found '690 valid and indirectly infringed. Post-trial JMOL motions were denied by EDT Judge Davis. On appeal, a CAFC panel points out a numerical obviousness that anchored anticipation.
Posted by Patent Hawk at 1:47 AM | Prior Art
December 8, 2011
Construction Equipment Company (CEC) sued Powerscreen for infringing 5,234,564, which claims a construction site debris sifter. "The district court ruled that the '564 patent was valid, enforceable, and willfully infringed by Powerscreen, and entered final judgment... The Federal Circuit affirmed the district court's judgment. Constr. Equip. Co. v. Powerscreen Int'l Distrib. Ltd., 243 F.3d 559 (Fed. Cir. 2000), cert. denied, 531 U.S. 1148 (2001)." That should have been the end of it, but it was only the beginning. The USPTO and CAFC demonstrate an abject disregard for the law and the constitution, as the anti-patent juggernaught rolls on, leaving only debris from intellectual property.
Posted by Patent Hawk at 9:13 PM | Prior Art
December 2, 2011
Teva sued AstraZeneca for infringing RE39,502, claiming drug treatment for lazy meat eaters (dyslipidemia). But AstraZenaca had manufactured the patented drug first. Summany judgment of anticipation was the defendant's remedy. Teva complained that it deserved the patent because AstraZenaca hadn't appreciated what it had done. No need for that, the CAFC reminds.
Posted by Patent Hawk at 1:11 PM | Prior Art
November 15, 2011
Francis L. Conte worried over a rubber-band gun to swat insects. His patent application was rejected as obvious by the PTO. Conte took this valuable invention to the CAFC, which gave a lesson in the close-enough subjective standard of Obzilla.
Posted by Patent Hawk at 5:51 PM | Prior Art
October 18, 2011
Stone Strong sued Del Zotto for infringing its patents for pre-cast concrete blocks used in retaining walls - 7,073,304 & 6,796,098. The district court found the patents infringed and not invalid, though "with little elaboration of its reasoning." On appeal, it took but a little realignment for Obzilla to break on through to putting the patents in the public domain.
Posted by Patent Hawk at 11:12 PM | Prior Art
October 3, 2011
Bettcher sued Bunzl for infringing its electric meat-cutting knife patent - 7,000,325. The patent was invalid by Bettcher's own products. The district court judge was biased against Bunzl - inadequate claim construction and bum jury instructions were the result. That bias carried over to the CAFC. The result - more inconstancy in case law - another slab of double-talk that allows let courts justify their whims. The joke of patent jurisprudence continues.
Posted by Patent Hawk at 7:37 PM | Prior Art
September 5, 2011
Suck It Up
Mytee Products filed a declaratory judgment action against Harris Research over 6,266,892 and 6,298,577, which claim carpet cleaning nozzles. The DJ went poorly. "After summary judgment proceedings and a jury trial, both patents were found to be not invalid and infringed. Harris moved for a permanent injunction, which the district court granted." The CAFC affirmed. This is a case of "be careful what you wish for," and make sure you have decent lawyers making your wish.
Posted by Patent Hawk at 11:23 AM | Prior Art
August 27, 2011
6,440,392 claims a nasal spray for treating osteoporosis, a bone disease caused by unhealthy lifestyle. As with many patented drugs, corporations make enormous profits in the U.S. treating the sufferings of the ill-disciplined. '392 owner Unigene Labs sued Apotex, a Canadian firm, for trying to muscle its way into a duopoly by filing an ANDA, which invariably sets up a patent battle that the upstart hopes to win, usually by invalidating the patent. It didn't work this time. '392 was found valid, both at district court, and on appeal, where the CAFC set its own formula for chemical obviousness - for this case at least.
Posted by Patent Hawk at 6:55 PM | Prior Art
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
August 23, 2011
6,826,298 claims an automated semiconductor wafer defect inspection system. Owner Camtek asserted against August Technology, winning a $6.8 million award for lost profits and an injunction. August Tech appealed. An interesting claim construction issue over a wafer being wafers is walked all over by the CAFC extending the § 102(b) on-sale bar to cover eventual invention.
Posted by Patent Hawk at 4:47 PM | Prior Art
August 5, 2011
Albert Fairclough got 5,622,375 for a two-child push-chair. During earlier prosecution of the family, Fairclough found out about a couple of highly material prior art references, which he duly neglected to inform the USPTO of. Joovy, '375 owner, sued Target, which admitted infringement, but asserted prior art invalidity and unenforceability by inequitable conduct. The North Texas district court granted summary judgment of inequitable conduct, but denied invalidity. The CAFC flipped that sunny-side up: broadening claim construction on "rear wheels," thus paving the path to anticipation, while not bothering with unenforceability.
Posted by Patent Hawk at 12:33 PM | Prior Art
June 28, 2011
Serious body builders take a variety of supplements, not because they are serious about their health, but because they are serious about their ego. Brains and brawn seldom mix. And so it seems with at least one bodybuilder supplement maker. Creative Compounds filed a DJ against competitor Starmark Laboratories over 7,109,373. Starmark shot back, asserting infringement, and the comeuppance of Creative's 7,129,273 as invalid. Starmark found favor at district court: "summary judgment on all counts and denied Creative's motion to dismiss for lack of jurisdiction." The appeals court backed the district court on everything but subject matter jurisdiction. But the punch of that was moot, because Creative's '273 was effectively invalidated, and so can never be successfully asserted.
Posted by Patent Hawk at 4:03 PM | Prior Art
June 22, 2011
5,211,954 claims a sleeping pill with a relatively low dose (7.5 mg) of active ingredient temazepam. As usual, an ANDA kicked off patent litigation, Tyco v. Mutual Pharmaceutical. The district court put the patent to sleep for invalidity in summary judgment. Nightmares of Obzilla were short lived, as the CAFC affirmed the doze as permanent.
Posted by Patent Hawk at 1:11 PM | Prior Art
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 13, 2011
Spectralytics sued Cordis and Norman Noble for infringing 5,852,277, claiming a manufacturing technique for a coronary stent. A jury found the patent valid and willfully infringed, to the tune of a 5% royalty. Appeal covered judgment as a matter of law (JMOL), damages, obviousness, willfulness, and award of attorneys fees.
Posted by Patent Hawk at 7:58 PM | Prior Art
June 9, 2011
Clear & Convincing
When it comes to patent cases, the courts are biased towards mega-corporations, at granting undeserved credibility and in airing their gripes. But the license only goes so far. The Supreme Court has taken numerous patent cases since technology corporations starting whining about "junk patents" coming out of the USPTO last decade. The goal, as Justice Breyer put it, has been "to separate the sheep from the goats." Microsoft cried "goat" about i4i's patent that it infringed. So the Supremes brought in the livestock.
Posted by Patent Hawk at 9:22 PM | Prior Art
June 7, 2011
There's a crummy consistency to patent validity stupidity: failure to discriminate (which is symptomatic of the unaware generally). The cattle call "everything is everything" has a holistic ring, but it's more a rant for those too dim to discern between facets that matter. Post-Obzilla, such mental faux pas is common in USPTO examination, as applicants constantly experience. Arnold G. Klein was one of them.
Posted by Patent Hawk at 9:15 PM | Prior Art
June 4, 2011
Knowles Electronics put MemsTech before the ITC because "the importation and sale of certain silicon microphone packages violated § 337 of the Tariff Act of 1930 as amended, 19 U.S.C § 1337." In other words, patent infringement. Knowles' patents were found valid and infringed by MemsTech's importation. MemsTech appealed, in a matter of interest only for a review of crusty case law.
Posted by Patent Hawk at 3:13 PM | ITC
May 19, 2011
Allergan sued Apotex and Exela for infringing 5,424,078 and related patents, claiming eye drops to treat glaucoma. The litigations were prompted by the would-be infringers exposing their intentions by filing ANDAs. The generic rascals were routed, failing to invalidate, and failing to skirt infringement. Apotex appealed obviousness, and knocked down '078 on appeal, but not its relations. Lousy lawyering comes to fore as factoring in, as did, for Exela, clever counsel.
Posted by Patent Hawk at 8:12 PM | Prior Art
May 17, 2011
The USPTO, a collective of numbskulls, feels no pain in ignoring facts and the law. Endo Pharmaceuticals appealed three applications related to time-released opioids. Agreeing with the examiner, the BPAI rejected all three as obvious. On appeal, two went up in smoke, but the CAFC gave one a time-released reprieve.
Posted by Patent Hawk at 9:37 PM | Prior Art
May 10, 2011
Gary Odom, aka Patent Hawk, inventor/prosecutor/reluctant pro se litigator, sued Microsoft for patent infringement. What a total debacle. Everything that could go wrong did, from choice of counsel on out. In the finale at district court, Odom was railroaded pro se to summary judgment of invalidity by a biased judge. Patent Hawk, patent validity expert, had his own patent invalidated, by prosecution-cited prior art. And affirmed on appeal. Embarrassing? Yes, but for who?
Posted by Patent Hawk at 12:29 PM | Prior Art
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 18, 2011
i4i squeezed $290 million in damages for an obscure feature in Word 2007. Sociopath Microsoft had tried to invalidate the asserted patent with suspicious testimony. Before the Supreme Court now is whether the patent invalidity burden of proof bar should be lowered from its "clear and convincing" standard to "preponderance of evidence" for prior art not considered before the patent office. Today's oral arguments demonstrated the legal vagrancy of Microsoft's position as it sails the longest river: denial.
Posted by Patent Hawk at 7:23 PM | Prior Art
April 11, 2011
Building an Invalidity Position
Most patents are junk. But proving that to a judge or jury is no easy task. The more technical the claimed invention, the more difficult it can be to convey the mapping between prior disclosures and patent claims to one of less than skill in the art. Prior art search is the first step to developing an invalidity position, and a most important step. But prior art search is best viewed as a cog used to build an invalidity steamroller. Fitting the parts together isn't always as simple as it may seem.
Posted by Patent Hawk at 6:15 PM | Prior Art
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
March 26, 2011
Innovention Toys successfully sued MGA Entertainment,Wal-Mart Stores, and Toys "R" Us for infringing 7,264,242, "which claims a chess-like, light-reflecting board game." The win at district court was, of course, appealed. The CAFC panel found that the district court strayed from the path in determining nonobviousness, and remanded.
Posted by Patent Hawk at 4:00 PM | Prior Art
March 25, 2011
Duramed sued Watson for infringing timed-release oral contraceptive patent 7,320,969. As with most drug patent matters, Watson painted the target it on itself with an ANDA. Watson stipulated to infringement, but challenged validity under obviousness. The district court thought not obvious. For a timed-release patent contraceptive, Watson appealed over yet another district court judge that has no place trying patent cases. "A reference is prior art for all that it discloses, and there is no requirement that a teaching in the prior art be scientifically tested."
Posted by Patent Hawk at 7:29 PM | Prior Art
March 3, 2011
5,967,375 claims a sealant melter, useful for sealing cracks in roadways. Crafco and Cimline are competitors in roadway construction. Crafco pestered Cimline about '375, so Cimline filed an invalidity DJ action. Which backfired. The district court sua sponte granted summary judgment infringement to Crafco, and then entered an injunction against Cimline. Cimline appealed. From muddled minds in Minnesota, a case of lamentable lawyering, injudicious judging, and a CAFC that sees daylight.
Posted by Patent Hawk at 5:52 PM | Prior Art
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 6, 2011
F. Scott Kieff may be witless in choosing article titles, e.g., "The Patent Process Run Amok", but he stirs some stimulating stew. In the i4i v. Microsoft case, a largely incompetent Supreme Court, grossly in thrall to corporate and government empowerment, feels obliged to again worry a detail of patent law that has no constitutional question behind it. What makes this case ironic is that the target i4i patent got bullet-proofed by reexam instigated by Microsoft, so the burden of proof to invalidate it is moot in this instance: the patent is valid, and Microsoft is res judicata in invalidating it. The safe bet is that the Supreme Court will jigger the validity calculator, but in their reasoning, how far they wander from logical rigor into a supreme wonderland of thought is, as always, the entertainment value.
January 31, 2011
5,697,775; 5,897,308; and 6,093,017 claim "lighters having extended lighting rods (useful for lighting barbecue grills, for example)" with "automatic child-safety mechanisms for preventing accidental ignition." Owner Tokai sued competitor Easton for infringement. Easton burned the asserted patents to the ground via summary judgment. Tokai thought it a pity to lose on validity, so it sang its ditty to a mostly tone-deaf appeals panel. Obzilla has a cook-out.
January 5, 2011
The evidence herein is anecdotal, but the pattern is unmistakable: an incompetent BPAI decision is overturned by the CAFC. Glatt Air Techniques had one of its particle coater patents, 5,236,503, rejected over obviousness in reexam by a third-party requestor. The patent office can't tell the difference between prevention and a remedy. That pretty much sums up the Kappos regime's continuing failure of core competence for quality examination: rejection as prevention, leaving only appeal to the Court for remedy. Pathetic that the USPTO cannot recognize an invention, which thereby damages the sole mission of the patent office: to grant worthy patents.
January 4, 2011
Locking Up Damages
Uniloc sued Microsoft over its product activation software, infringing Uniloc's 5,490,216. Uniloc convinced a jury of willful infringement, to the tune of $388 million, plus $86 million in interest. Microsoft then swayed the district court judge to pitch the jury verdict. The inevitable appeal furthered court reform of the patent laws, particularly damages methodology. Goldscheider and his dedicated flock of followers are belatedly shoved into oblivion, and the whole hog market rule is butchered again.
December 21, 2010
Tessera designs semiconductors, and thereby manufactures patent litigations. This episode emanates from the ITC, in an action against several parties: Spansion, Freescale, ATI, STMicro, and Qualcomm. Motorola settled. 5,852,326 and 6,433,419, going to a particular semiconductor packaging, were asserted. After typical bureaucratic discord, the ITC found the patents valid and infringed. The inevitable CAFC appeal inevitably went to claim construction, infringement, and validity.
Posted by Patent Hawk at 11:36 PM | ITC
November 29, 2010
Lay That Burden Down
The black-robed toads who feel beholden to uphold the powers that be are taking it upon themselves to look at a more open season for patent killing. i4i squeezed a $290 million jury award from Microsoft for a feature in Word that few users knew existed, let alone use: customizing XML using metacodes (which, technically, is like herding cooties). The CAFC affirmed willful infringement, enhanced damages, permanent injunctive relief, and validity. Meanwhile, the patent office confirmed i4i's claims as valid over Microsoft-cited reexam prior art. The high court must scrutinize a system that is clearly broken: something is terribly wrong when some pip-squeak inventor or puny entity can extort money from mega-corporations raking in obscene cash flow, and have minion courts and bureaucrats let it slip by.
November 2, 2010
AstraZeneca sought and got a preliminary injunction against Apotex, which was hankering to launch a generic version of the asthma drug Pulmicort. Apotex did manage to invalidate "kit" claims of asserted 6,598,603 and 6,899,099. Appeal left things as at district court, with dissent on the injunction, owing to a different take on validity.
October 14, 2010
Richard F. Schwemberger filed an application for a surgical stapler which the patent office found an obvious combination of two prior art references. We're talking pre-KSR obvious (not that the PTO or CAFC bothered with such legal finesse). Which makes Schwemberger not exactly patent savvy. Rather than advise reality, Howard N. Flaxman of Welsh & Flaxman pocketed Schwemberger's hard-earned for appeal of a hopeless case. In a lot of ways, this is not unusual. But it is a good cautionary tale.
October 13, 2010
The Invention Zone
6,730,817 claims a process for making a refrigerant gas that won't deplete atmospheric ozone and turn Earth into more of a baking oven than humans are busy otherwise doing. Owner Solvay sued Honeywell for infringing '817. For their pains, Solvay had some asserted claims found infringed, but "invalid under 35 U.S.C. § 102(g)(2) because Honeywell was a prior inventor." Appeal got the invalidity ozone depleted from district court summary judgment.
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 9, 2010
Daiichi Sankyo owns 5,616,599, which claims a compound formula (angiotensin receptor blockers "ARBs") used to treat high blood pressure. Research on this line of drugs began in the 1970s. '599 represents an advancement in the second generation of similar compounds. Mylan's ANDA got the litigation ball rolling. With the pressure on, Mylan couldn't convince the district court, in a 10-day bench trial, that '599 was obvious. The pressure stayed on in appeal.
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.
August 22, 2010
A "bundle breaker" is a machine that separates stacked sheets of corrugated cardboard. 6,655,566 claimed an improvement that allowed a bundle breaker to simultaneously separate stacks of different heights. George M. Martin is this country's king of cardboard stacking. Martin has been stacking cardboard since 1960, and has about 90% of the cardboard stacker machine market. Martin has sold bundle breakers, which incorporate '566's claimed technology, since 2002. Martin sued chief competitor Alliance Machine Systems International for infringement. A hung jury resulted in the judge breaking Martin's potential bundle by ruling the asserted claims obvious. Martin stacked his hopes on the CAFC.
August 20, 2010
Transocean Offshore Deepwater Drilling innovates so humans can drive around on the cheap until they pollute themselves out of existence. And, as anything that lives in the Gulf of Mexico would tell you (if it could talk), pollution begins at the wellhead. Transocean tried drilling rival Maersk for infringing 6,047,781, 6,068,069, and 6,085,851, in South Texas, where they love oil like cattle love grazing. But apparently not those patents, because the district court held the asserted claims invalid, not infringed, and Maersk not acting willfully. Transocean had to pitch its bit to the CAFC.
Posted by Patent Hawk at 2:35 PM | Prior Art
August 13, 2010
King Pharmaceuticals sued Eon Labs for infringing 6,407,128 & 6,683,102 after Eon filed an ANDA to make a generic version of the muscle relaxant claimed, metaxalone, which was first patented in 1962 (3,062,827). Eon got summary judgment of invalidity via six prior art references, three of which the court relied upon. The district court found claims inherently anticipated. "To inherently anticipate, the prior art need only give the same results as the patent, not better." One claim was found inherently obvious. Other claims, in both '128 and '102, were found wanting under §101 for lack of transformation: the claims' "informing" limitation was ethereal. Whereupon appeal, with its own special informing about "informing" being unpatentable. "It is not invention to perceive that the product which others had discovered had qualities they failed to detect."
Posted by Patent Hawk at 11:46 AM | Prior Art
July 22, 2010
Lock on Obzilla
Wyers sued Master Lock for infringing 6,672,115, 7,165,426, and 7,225,649, applicable to hitch pin locks for trailer towing. A jury found the patents nonobvious. Wyers secured an injunction along with $5.35 million in reasonable royalty damages. Master couldn't break the lock to obviousness post-trial, so it appealed. Herein, a thorough discussion of KSR, and case law that will be cited for years to come.
July 7, 2010
You don't need to have a novel invention to get a US patent. You just need to beat the clock, a clock rigged to America as superior to inferior foreigners, a patent xenophobia most unbecoming. "Domestic and foreign filing dates stand on entirely different footings." Peter J. Giacomini and his pals tried rigging the clock for their computer data cache patent application. The BPAI upheld the examiner's § 102(e) rejection over 7,039,683 (Tran). Giacomini did not dispute Tran as invalidating if prior art. Giacomini argued Tran was not prior art, even though Tran claimed priority to a provisional application. Giacomini's problem was that Tran's provisional was a US application.
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 14, 2010
Opium for the Masses
Par Pharmaceutical filed an ANDA to make a time-released version of the opiate tramadol. Patent holder Purdue sued for infringing 6,254,887 & 7,074,430. What was Purdue smoking? The asserted claims were readily obvious in light of 5,580,578. A charge of inequitable conduct by submitting "a materially misleading declaration" was merely "overly aggressive" "positive spin," not intent to deceive.
Posted by Patent Hawk at 5:12 PM | Prior Art
June 9, 2010
TriMed sued Stryker in 2006 for infringing 5,931,839, which claims "an implantable device used to set bone fractures." The district court granted summary judgment of noninfringement. Appeal reversed and remanded for an incorrect claim construction. Stryker then struck pay dirt with summary judgment invalidity. The appeals court was less than thrilled.
June 8, 2010
B-K Lighting sued FVC for infringing RE39,084, which claims an adjustable mount for a sealed light fixture. After giving the B-K's expert short shrift, the district court granted summary judgment of invalidity by obviousness for the asserted claims. The per curiam appeal pitched it back to the district court, because of "the conflicting testimony of the parties' experts" about whether a prior art reference disclosed a critical feature. In dissent, Judge Newman put the spotlight on spotty reasoning.
May 28, 2010
In offering a license, Ablaise accused Dow Jones of infringing 6,961,737 & 6,295,530, claiming web page personalization. Dow Jones replied with a DJ. Realizing that validity was in jeopardy, Ablaise offered a covenant not to sue for '530 (not '737), which Dow Jones spurned, because Ablaise wouldn't extend the covenant to Dows' parent, News Corporation. In the issue of continuing subject matter jurisdiction, the district court waved the proffered covenant away, and kept the railroad running. The district court found the asserted claims obvious in light of Fishwrap, an MIT online newspaper, 5,675,507, a customizable fax viewer, and HTGrep, with optional views of search results. The CAFC took Ablaise's covenant offer more seriously.
Posted by Patent Hawk at 12:19 PM | Standing
May 24, 2010
Patent Slips on Non-Slip Surface
Microthin.com sued SiliconeZone computer mouse pad patents 5,942,311 & 5,997,995, which claim "a thin, non-slip mat or pad made of plastic" and a method of making the same, respectively. After claim construction, the district court, by summary judgment, found the asserted claims, claim 1 of each patent, anticipated by 5,738,325. Microthin.com appealed construction of the claim term "non-slip," wanting the term to include "not sticky."
May 19, 2010
Another patent applicant groans like Tom Jones: "Stop Breaking My Heart." Does this lyric sound familiar? "The applicant argues that these rejections were based on a misunderstanding of the [prior art] references, and lacked sufficient findings by the Board. The applicant states that the Board misinterpreted claims , leading the Board to conclude erroneously that the additional limitations in these claims were taught by [the prior art]. The applicant complains that neither the examiner nor the Board made sufficient findings or adequately explained their reasoning. The PTO, through the Solicitor on this appeal, now seeks to substitute new reasoning for that supplied by the Board concerning how the asserted references should be interpreted." Business as usual at the PTO. But, like Tom Jones hammering home "Sixteen Tons," the CAFC lambasts the PTO for randy rejection.
May 18, 2010
Sales Assistant Killed
Jerome Johnson got thoughtful while working "at a farm equipment dealership." 5,367,627 claims a computerized sales assistance system for finding particular parts. Jerome sold the patent to Orion in 2004. Orion sued Hyundai and 20 other automakers. The 20 others settled, but Hyundai fought on. Hyundai lost, to the tune of $34 million, plus interest and ongoing 2% royalty. Failing post-judgment JMOL, Hyundai appealed over anticipation and inequitable conduct.
May 8, 2010
On the Mat
David T. Pelz tried to patent a golf training mat (11/066,554). Non-final rejection purely on anticipation prompted Pelz to amend the preamble. The language in the claims: "consisting essentially of," and "include," speak volumes to a deft prosecutor of the claims being in the weeds. The patent Board putted along with the examiner. Pelz appealed to the CAFC, who held the flag.
April 14, 2010
The rampaging incompetence of the USPTO is dammed only by appeal to the courts. Time and again, the PTO's "broadest reasonable interpretation" of claims is hell and gone from reasonable. Case in point: 4,944,514, owned by Suitco Surface, which got a hard buffeting from the patent board in reexam, but reprieve from the CAFC.
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 30, 2010
Power-One sued Artesyn for infringing power supply regulator patents, particularly monitoring point-of-load (POL) regulators. A permanent injunction resulted, followed by Artesyn's appeal over claim construction, namely, the term "POL regulator", with a side of obviousness. The CAFC turned both aside.
Posted by Patent Hawk at 12:38 PM | Claim Construction
March 5, 2010
5,955,955 claims a computer drive bay fan, meant to cool the hard drives right in their own living room. '955 owner Comaper sued Antec for infringement. Trial found Antec willfully infringing some claims. Some claims were obvious to the jury, others validly novel. Appeal found that "irreconcilably inconsistent." The CAFC resolution was to define analogous art as either "from the same field of endeavor," or "reasonably pertinent to the particular problem with which the inventor is involved." Upon that the CAFC created its own reconcilable inconsistency.
March 3, 2010
Media Technologies sued Upper Deck for infringing two memorabilia patents: 5,803,501 & 6,142,532. After a trip to the CAFC on district court summary judgment over res judicata (reversed), trial court proceedings were stayed pending reexamination. Both patents made it through reexam unscathed. Then, based on claim construction, Upper Deck got the upper hand by summary judgment over obviousness.
February 25, 2010
The International Trade Clowns (ITC) handed a crock to clog maker Crocs when it asserted 6,993,858 and D517,789: '858 was found obvious and '789 not infringed. Crocs squealed and appealed to the CAFC, which stepped in it and splattered the ITC with both feet: utility and design patent case law.
February 24, 2010
Andrew Chapman and David King had a patent idea "directed to divalent antibody fragments comprising two antibody heavy chains and at least one polymer molecule attached to the heavy chains in a site-specific manner on each chain... Chapman's invention involves joining together two fragments with an interchain bridge containing a polymer, thus achieving a circulating half-life that is intermediate between that of an individual fragment and a whole antibody."
February 9, 2010
Why the Hawk
A friend and client, India born, was telling me about the different prior art search firms he had used. "The Indians are cheap, and you get what you pay for. They find something and they quit. They know nothing about litigation, or U.S. patent laws. They have no concept of story art. They just throw a piece or two of art over the wall to you and declare victory. The European Patent Office searches like examiners. What else would you expect? They do okay for a superficial search, but for a litigation search, they are incomplete. Like the Indians, the EPO also just cites references."
February 8, 2010
ResQNet sued Lansa in 2001 for infringing five patents related to terminal emulation. Lansa found art, two unpublished user manuals for a software product called Flashpoint, that it argued anticipated one of the asserted patents, 6,295,075. But the district court wouldn't admit the art as public, and hence not legally prior art. Lansa tried to argue that NewLook 1.0 anticipated '075 by being sold more than a year prior to 075's filing date, but NewLook 1.0 "lacked an essential limitation," so was not found to be invalidating prior art. Alas for Lansa, a later version of NewLook was found to have the feature, and so infringed. Then there were the issues of damages, and sanctions....
February 2, 2010
Abbott sued Beckton, Dickinson and Company and Nova Biomedical for infringing 5,628,890, which claims a glucose sensor. A jury found '890 anticipated. Abbott appealed the trial judge's jury instruction over the meaning of anticipation. The CAFC surveyed the boundary of inherency, and found the nugget: "all elements must be disclosed in an anticipatory reference in the same way as they are arranged or combined in the claim."
January 29, 2010
5,820,551 claims single-use test strips for measuring blood sugar, useful for diabetics. Becton, Dickinson and Company threw down a declaratory judgment (DJ) action on competitor Abbott over a couple other patents. Abbott countered with a suit that also asserted '551. Weak move. The DJ worked: summary judgment of non-infringement and anticipation of numerous claims of one patent. '551 underwent a bench trial, and didn't survive the operation: invalid due to obviousness and unenforceable due to inequitable conduct. Abbott appealed.
Posted by Patent Hawk at 1:25 AM | Prior Art
December 22, 2009
i4i sued Microsoft for a pissant feature in Word: editing custom XML. But to i4i's business, the feature was puissant. A seven-day trial found Microsoft willfully infringing a valid patent, with a jury award of $200 million. "Although statutorily authorized to triple the jury's damages award because of Microsoft's willful infringement, the district court awarded only $40 million in additional damages. It also granted i4i's motion for a permanent injunction." The inevitable appeal, widely expected to go more Microsoft's way than not, did not. Procedural fumbling by supposedly the best lawyers money can buy sold Microsoft short. Herein, CAFC case law heavy on burden and sufficiency, in a case practically covering the gauntlet of patent enforcement.
December 17, 2009
Bless his heart, Henry Gleizer couldn't let go of his automated transaction patent application, taking his appeal all the way to the CAFC. What wasn't obvious to Henry was that obviousness isn't just obvious, post-KSR, it's monstrously obvious. Gleizer was affronted with the ease of combination to stomp his claims. However inarticulate, articulated reasoning need be but a whisper to damnation. And that whispered word need only be "predictable."
December 8, 2009
Source Search Technologies (SST) sued LendingTree over 5,758,328, which claims an online vending system employing request for quote (RFQ) posting to select potential vendors, to which the vendors respond. "The '328 patent claims to solve the "too much" or "too little" information problem commonly associated with running searches over a network or system." The asserted claims were found infringed but obvious, thus invalid, in summary judgment. The appeal, narrowed to a single claim (14), let the CAFC panel reiterate its caution to district courts: be not hasty in granting summary judgment if the scent of "genuine issues of material fact" is in the air.
December 3, 2009
Tom DiStefano got his quota-fulfilling bulk email patent, 6,631,400, when the PTO was still grinding out junk patents. Sued for infringement, InfoUSA snuffed the spam patent in summary judgment under obviousness after claim construction. With common sense, the CAFC licked the stamp that put that patent out of everyone else's misery, allowing a flood of spam email to go unpatented.
November 19, 2009
6,100,287 claims a nutritional supplement for "enhancing muscle performance" and recovering from fatigue. Iovate sued BSN over '287. The district court found the asserted claims anticipated by advertisements in Flex magazine. It took no muscle flex for the CAFC to confirm.
September 23, 2009
Dr. Richard S. Lister came up with the idea of letting golfers tee fairway balls "to obtain better scores in a shorter time." In 1994, pro se, he submitted a manuscript to the Copyright Office. Two years later he caught wind that he needed to file a patent. He's been fighting the patent office ever since, as they insist his copyrighted manuscript constitutes publically accessible prior art. His rejoinder is that it was never public. Lister finally got to the court of appeals.
Posted by Patent Hawk at 9:32 AM | Prior Art
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?
August 26, 2009
Ortho-McNeil sued Teva over RE39,221, claiming a combination of pain relievers acetaminophen and tramadol. The district court granted summary judgment of obviousness to all asserted claims, as well as finding one claim, 6, anticipated. Ortho-McNeil appealed.
August 21, 2009
Cardiac Pacemakers sued St. Jude Medical for infringing 4,407,288, claiming an implantable cardiac defibrillator (ICD). On second appeal, while multiple issues get the ticker running quicker, what really pumps is excluding method claims from Section 271(f).
August 14, 2009
In the Weeds
Callaway Golf sued Acushnet over four golf ball patents. Acushnet teed itself up with an admission of infringement, but tried to whack the asserted claims into the sand trap of prior art invalidity. The district court judge granted summary judgment of no anticipation. A trial on obviousness found all but one claim in the fairway, Callaway seemingly a short pitch to the green. Acushnet appealed, wanting a mulligan over the anticipation bogie, and an inconsistent jury finding upheld by the district court. They got it.
August 10, 2009
Douglas J. Shoner had a pneumatic tire design rejected by the PTO over obviousness. Shoner appealed to the CAFC, which affirmed. Shoner's plea (hardly an argument) relied upon reading an unstated limitation into his claim from the spec. "The PTO is required to give claim terms their "broadest reasonable interpretation consistent with the specification," and there is nothing in the specification that would explicitly limit the air chamber to a particular structure... See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) ("Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.")." (CAFC 2009-1277 non-precedential)
August 6, 2009
The danger lurking in obviousness is hindsight reasoning. A breakthrough becomes predictable. In hindsight, you/they/whoever should have seen it coming. Bayer's oral contraceptive, Yasmin®, had unexpected performance. The active ingredient, drospirenone, readily degraded in an acidic environment like the stomach. Grinding it to itty bits, i.e. micronizing, should have exacerbated the problem. So, logically, you'd coat it, to try to make more of the drug bio-available. Bayer found out that coating wasn't necessary, and micronizing didn't decimate bioavailability in an acidic environment nearly as badly as previously thought. That much was obvious. But only in hindsight.
August 2, 2009
6,310,269 claims a tampon with a solid fiber core denser than radially projecting ribs, the ribs being narrower at their base at the core than at their distal ends. McNeil, the patent holder, requested reexamination based upon an uncited Japanese patent application. The examiner rejected the claims over the prior art, and the BPAI agreed. McNeil appealed to the CAFC.
July 10, 2009
In permissible hindsight, the PTO during the Clinton administration was so lenient in doling out patents that Obzilla (aka KSR) became a necessity to expeditiously clean up the mess. Case in point: letting Larry Proctor patent a transplanted yellow Mexican bean after growing it for a few seasons. The applicant was open-faced about doing a simple Mendel with the bean, but was granted a patent for it anyway. Reportedly, Proctor then proceeded to commit "predatory patenting" and "biopiracy," beaning 16 small bean seed companies for infringement.
Posted by Patent Hawk at 11:28 AM | Prior Art
June 25, 2009
Paid As Used
Richard P. Mettke got 5,602,905, claiming a "public on-line, pay-as-you-use communications terminal." He wanted his claims directed to the Internet, so he filed for reissue, pursuant to 35 U.S.C. §251, "submitting with his application a declaration stating that he believed the '905 patent to be 'wholly or partly inoperative or invalid by reason of me claiming less than I had the right to claim.'" Naturally, Obzilla stomped on it, with the help of three interested potential infringers slipping the PTO previously uncited art. Not content to have his patent act as a rug, Mettke persisted. The stomping never stopped.
June 13, 2009
William Guess and George Morgan filed a patent application for "a musical instrument that includes a keyboard attached to a guitar body." Claim 1, the only independent, was a Jepson claim: a product claim listing a preamble that is typically in the prior art, followed by a listing of novel improvements. Rejected over a single prior art reference. Upheld all the way through the CAFC.
June 9, 2009
To sanitize meat, processors directly apply biocides. To that end, Ecolab got 6,010,729, 6,103,286, and 6,113,963, which it asserted against competitor FMC. FMC counterclaimed 5,632,676. A jury found some of Ecolab's asserted claims invalid, while FMC's '676 withstood validity challenge. Both infringed the other's surviving claims, FMC willfully so. Reasonable royalties to both. Post-trial motions of non-infringement by Ecolab and invalidity by FMC were shunted by the district court, and so appeals from both.
June 1, 2009
Depuy Spine has been trying to screw Medtronic with 5,207,678, claiming a pedicle screw, used in spinal surgeries. Medtronic skirted literal infringement. On remand from the CAFC, the issue then became doctrine of equivalents, whereupon Medtronic reared an ensnarement defense. "Ensnarement bars a patentee from asserting a scope of equivalency that would encompass, or "ensnare," the prior art." This factual inquiry is a matter of law. And, herein, an exposition on teaching away.
Posted by Patent Hawk at 6:39 PM | Prior Art
May 14, 2009
Procter & Gamble sued Teva for infringing 5,583,122 after Teva let P&G know it was planning on marketing a generic version of P&G's osteoporosis drug Actonel®. Teva had honed its bone of contention that '122 "was invalid as obvious in light of P&G's expired U.S. Patent 4,761,406," or "invalid for obviousness-type double patenting."
Posted by Patent Hawk at 3:04 AM | Prior Art
April 28, 2009
In the Wind
The Open Invention Network, Linux advocacy group, is publicly tilting at the big windmill: looking for prior art to invalidate the three file management patents that Microsoft asserted against TomTom. Keith Bergelt, CEO: "The patent vetting activity offered by the Linux Defenders portal offers a unique opportunity to bring to bear the collective knowledge, passion and ingenuity of the Linux community to better explore the validity of the patents..." If the guy was looking for something more than window dressing for the penguin geeks, he'd give amateur hour short shrift and call Patent Hawk.
April 24, 2009
Mind Enterprises successfully sued Vast Resources for its patent claiming a lubricious glass rod with a bulbous tip, the patent titled "Sex aid". On appeal, the defendant was able to convince the CAFC that there was nothing new to getting nude with attitude, even if the gist had a probing assist. The legal gist: mere substitution of materials is obvious.
April 3, 2009
Marek Kubin and Raymond Goodwin sought "a claim to a classic biotechnology invention - the isolation and sequencing of a human gene that encodes a particular domain of a protein." The BPAI found it obvious. On appeal, the CAFC wound back the clock to an earlier precedent of "obvious to try" that will march through time. The crucial inquiry: how good a pointer was the prior art?
April 1, 2009
Paul J. Bryan filed a "patent application [which] describes a 'game board and game having a touring band theme.'" He claimed "a game board and game." The examiner found an obvious combination of "a musical band-themed board game with nearly the exact structure that Mr. Bryan claimed." The examiner's rejection was upheld on BPAI appeal. Bryan took it to the CAFC. Apparently, without legal advice.
March 31, 2009
Cordis and Boston Scientific went after each other over intravascular stent patents, each found infringing. On appeal, not much changed, spotlighting a case where settlement was precluded only by poor judgment. Of most interest is a fine shading of when prior art isn't. And a reminder that what an inventor thought is irrelevant to claim construction.
Posted by Patent Hawk at 7:26 PM | Prior Art
March 26, 2009
Useless But Enabling
Martin Gleave and Maxim Signaevsky tried for a patent on an antisense oligodeoxynucleotide, an organic compound. Examiner prior art rejection was upheld by the patent board. On CAFC appeal, two points were made: 1) a reference is anticipatory if enabling, regardless of utility; and 2) knowing a genus anticipates all its species if the genus is so limited that the species hold no mystery.
Posted by Patent Hawk at 9:17 PM | Prior Art
March 25, 2009
Clock Spring sued Wrapmaster for infringing 5,632,307. '307 claims a method of gas pipe repair. Without expert affidavits, the district court found in summary judgment the patent invalid due to obviousness, rejecting a prior-use argument. On appeal, the CAFC bought Wrapmaster's showing of prior use: that Clock Spring publically demonstrated the technology in 1989, more than a year prior to filing the patent (1992). Herein, rubber-band §102(b) readily stretches to envelop §103(a). And a discourse on experimental use.
March 12, 2009
Claim 2 of Natures Remedies' herbal weight loss patent 5,945,107 lost terminal weight before the BPAI, based upon a § 102(b) prior art application in Demark for clinical testing of an anticipatory compound. On appeal to the CAFC, the anticipation of the reference was undisputed. The issue was whether the application "was accessible to the public and therefore a "printed publication" under 35 U.S.C. § 102(b)."
March 11, 2009
Up in Smoke
Robert Chapman (11/391,897) followed on the heels of Michael Casner (7,153,966) in his formulation for a synthetic opioid, oxycodone. In a USPTO interference, Casner knocked out the upstart Chapman on obviousness. On a spiteful appeal, Chapman tried comeuppance.
February 13, 2009
Ms. Rothman bore her first child in March 2000, then "sought out a nursing garment that would conceal her stomach while providing easy nursing access and full breast support. Unable to locate anything more elaborate than "just basically nursing bras," Ms. Rothman undertook the task of designing her own garment." With a design in mind, she sewed together parts from other clothing products, along with additional fabric. Then she patented her "Topless Topnotch Nursing Top." 6,855,029. That done, and no longer nursing, Ms. Rothman, aka Glamourmom, got down to the business of patent enforcement. Alas.
February 12, 2009
Amphire Solutions tried to get a patent (2003/0188264) on normalizing XML into a relational database, reducing redundancy using linked lists. On appeal before the patent board (BPAI), the application was Bilskied, then stomped by Obzilla. While the Board found computerized methods abstract, and hence unpatentable, a computer performing a function is not abstract, and hence patentable.
February 9, 2009
Ball Aerosol sued Limited Brands and Bath & Body Works for infringing 6,457,969, which claims "a candle tin with a removable cover that also acts as a base for the candle holder." Ball won a summary judgment verdict of infringement, which included a sua sponte finding of validity. That was pre-KSR. Afterwards, the court reaffirmed its determination that "no reasonable trier of fact could find other than" validity. Appeal found something other than a "reasonable trier of fact."
January 30, 2009
5,743,942, owned by Süd-Chemie, claims a desiccant container. "Desiccant containers are frequently used to maintain a dry environment for products during storage or shipping." Süd-Chemie sued Multisorb for infringement. In summary judgment, the district court Obzillaed the patent in light of 4,487,791 (Komatsu). On appeal, Süd-Chemie cited three unmet limitations. Only one was found non-obvious. But the patent survived.
January 26, 2009
Following in the soiled footsteps of Article One Partners, patent maimer by bounty hunting, Peer To Patent has added a branch organization, Post-Issue Peer To Patent, seeking to "improve the quality of patents by providing a framework for ferreting out weak, non-meritorious patent claims in patents that have issued."
Posted by Mr. Platinum at 12:47 PM | Prior Art
In the teeth of recession, how can patent law firms sharpen their competitive edges? According to Andy Gibbs, CEO of PatentCafe.com, interpreting facts as a matter of law does the trick. "The first Eureka moment will come when attorneys realize that the new family of IP software tools does NOT require patent search expertise as much as it requires legal interpretation to convert patent data to high value business information."
Posted by Patent Hawk at 6:09 AM | Prior Art
January 21, 2009
Friskit sued Real Networks for infringing patents for multimedia file playback over the Internet. Prior to KSR, the district court denied Real on obviousness. Post-KSR, in a renewed motion, Obzilla danced a terminal playback, killing them all. Friskit appealed, arguing three unanticipated limitations, along with "secondary considerations indicative of nonobviousness." The CAFC didn't second that. Friskit had to get real that it couldn't get Real.
January 15, 2009
Boston Scientific and Johnson & Johnson have a long-running battle of heart stent patents. Both have had victories in their war, which started in 1997. Today the victory was J&J's, overturning a unfavorable jury verdict, as Obzilla, the patent grim reaper, takes another victim on appeal.
January 9, 2009
Tokyo Keiso tried pipe-hitting SMC for infringing 5,485,004, claiming a pipe volume flow meter. Figuring Obzilla would take the "predictable next step", the district court found "the '004 patent obvious as a matter of law." No argument from the CAFC on that. After all, if the prior art isn't teaching away, it's teaching the way. Obzilla knows all the dance steps, that nimble lug. It didn't help that the "patent specification concedes as prior art most of the limitations of claims." Not much flow there.
December 26, 2008
Indubitably unbiased, InformationWeek's Microsoft blogger, Dave Methvin, laments small fry with software patents. "It seems like every few months, some obscure company is awarded a patent for some relatively mundane idea, then turns around and sues the companies that have been using it... It's a shame that companies can exploit the patent system to prevent advances in software."
December 21, 2008
6,673,064 claims a laser catheter. Dr. Peter Rentrop sicked '064 on Spectranetics, and copped a cool half million. Spectranetics, after sloppily stirring as much trouble for Rentrop as it could, appealed losing on obviousness, among other profundities. The appeals court reminded Spectranetics that they could have floated that boat, but didn't, and it's water under the bridge now.
December 20, 2008
Gary Wheeler cast for a fishing pole patent, and got snagged by the patent appeals board, which found Wheeler's illuminated transparent pole anticipated by fishing pole with a light bulb attached to the tip. The CAFC illuminated the pathetic shambles that the rejection-crazed patent office has become: they don't even comprehend §102.
December 12, 2008
Apotex tried to muscle in on the market for Plavix, a blood clot treatment, by challenging the validity of 4,847,265, owned by Sanofi. '265 claims a chemical compound, which Apotex argued anticipated in the prior art, and obvious. The courts sided with Sanofi. Plavix turns out to be one tricky concoction.
Posted by Patent Hawk at 11:44 AM | Prior Art
November 23, 2008
Anderson sued Pella for infringing its bug screen patent, 6,880,612. Summary judgment motions were swatted aside. Then Obzilla buzzed in. Drunk on KSR bug juice, the district court reconsidered, and squashed the patent. On appeal, how creative an ordinary bug screen maker could be becomes factual. Imagine that.
Posted by Patent Hawk at 1:53 AM | Prior Art
November 13, 2008
Bad Brew on Good Chemistry
6,365,687 claimed a chemical process used in plastic packaging, first disclosed in 1958. Oddly, '687 underwent Director-ordered reexamination, and was found unpatentable by prior art and double patenting. A 2-1 appeal decision damned a patent for which inventors Dr. Giulio Natta and Dr. Karl Ziegler won the Nobel Prize in chemistry in 1963.
Posted by Patent Hawk at 6:40 PM | Prosecution
October 22, 2008
Sandoz prompted a classic drug patent battle with Abbott Labs by filing an ANDA. Abbott got a preliminary injunction, which Sandoz appealed. The CAFC covers anticipation for the second day standing, and Judge Newman paints Obzilla in softer tones than recently seen.
Posted by Patent Hawk at 12:10 AM | Prior Art
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 14, 2008
As part of their ongoing patent war, Broadcom put Qualcomm before the ITC for infringing 6,714,983. The ITC did not find direct infringement, but did find inducing infringement, hence "issued a limited exclusion order ("LEO") against the importation of all downstream products containing the accused technology." By doing so, the ITC showed no respect for due process, and exceeded its statutory authority. Also herein, more caprice by the CAFC in complicating claim construction, and inconsistency in defining prior art.
Posted by Patent Hawk at 4:42 PM | Injunction
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
Fact Into Fiction
A trial court is trier of fact, with judge or jury as decider of fact. But a judge may overrule a jury verdict, thus obviating the jury's role. The judicial game is thus rigged with juries as showpieces of democracy in action. Case in point: Asyst Technologies v. Emtrak, over 5,097,421, claiming a system for tracking articles in a manufacturing plant, namely semiconductor wafers.
Posted by Patent Hawk at 12:37 AM | Prior Art
October 9, 2008
Anticipation Without Obviousness
Cohesive Technologies sued Waters for infringing patents claiming liquid chromatography. A jury found the patents not obvious over "seven separate prior art references." In a 2-1 appeal decision, the CAFC remands because seven patents that singularly or in combination didn't render the patents obvious, to which all agreed, but the appeals court majority thought they might anticipate. Huh? Obzilla obviousness nothing to straight-laced anticipation? Surely they jest. Alas, no. The dissent was a scathing straight arrow.
October 3, 2008
In a typical drug patent case, Impax wanted to barge in on Aventis' patented treatment for Lou Gehrig's disease (ALS), vis-à-vis 5,236,940, so Impax filed an ANDA, then a DJ motion, charging invalidity and unenforceability for inequitable conduct. The judge didn't buy it. Appealed. Remanded. District court judge still didn't buy invalidity, the only charge left to Impax (inequitable conduct being a regularly ginned accusation that seldom sticks). On second and last appeal, a lesson on prior art burden shifting, and the difference between anticipatory and enabling prior art.
Posted by Patent Hawk at 10:32 AM | Prior Art
September 19, 2008
CSIRO sued Buffalo in the Eastern District of Texas for infringing 5,487,069, claiming a technique for wireless networking. After claim construction, cross-motions for summary judgment left Buffalo holding the short straw: the patent valid and infringed. On appeal, obviousness is given a different take. Obzilla awakens for another snack.
Posted by Patent Hawk at 12:55 PM | Prior Art
September 18, 2008
Tessera asserted semiconductor chip packaging patents against Siliconware, Motorola, and Qualcomm, including 6,433,419. Patent Hawk was put on the case. Reexamination ensued. '419 rejection is now final, and heading to the patent appeals board.
Posted by Patent Hawk at 9:52 PM | Prior Art
September 15, 2008
A Peer-to-Patent email, picked up by several newspapers:
Some of the biggest players in the technology industry complain that the U.S. patent system is broken -- putting too many patents of dubious merit in the hands of people who can use them to drag companies and other inventors to court.
Some of the biggest players in the technology industry are looking to ease infringement cost by gutting patent enforcement. And they can't help but taint their shiny little project aimed at improving examination with propaganda tripe. Not a class act in the least.
August 28, 2008
Lexion Medical sued Northgate for infringing 5,411,474 and 6,068,609, which claim techniques for heating a patient's gut in preparation for laparoscopic surgery. '609 was stomped by Obzilla JMOL, while '474 eked out $721,662 in jury-awarded damages. On appeal, an overturned claim construction vacated the award, but Obzilla remained triumphant.
Posted by Patent Hawk at 2:41 PM | Claim Construction
August 23, 2008
Pennies Saved, Patent Lost
5,883,964 and 6,035,027 patented computerized phone callback, a scheme for lower international phone bills, because foreigners want a pretty peso for a phone call. Enforcing the patents was spent because the patentee sold out before patenting.
Posted by Patent Hawk at 12:49 PM | Prior Art
August 21, 2008
Leggett & Platt sued VUTEk for infringing 6,755,518, which claims inkjet printing, in particular, cold curing of the ink to affix it. '518 was baked in the oven of invalidity. One heat source was prior art, namely prior VUTEk patents. No scorched-earth prior art search needed.
From the appeal are mined jewels of anticipation, including the irrelevance of "teaching away," and applying the gauze of inherency: "a prior art reference may anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it." Mere mention is insufficient: "the fact that a claim limitation may be present in a reference does not establish that the reference inherently discloses that limitation." To be inherent, the supposed novel limitation must be one of the embodiment "possibilities" disclosed in the prior art.
Posted by Patent Hawk at 1:26 PM | Prior Art
August 20, 2008
Dead Cash Cow Still Milks
Astrazeneca sued Apotex and Impax for infringing patents of "pharmaceutical preparations containing omeprazole, the active ingredient in Prilosec." Filing ANDAs prompted the patent assertion. The patents expired, but that didn't moot the suit. Drug patent law provides an extra six months of exclusive sales to reap the profits of an expired patent. Also herein, CAFC confirmation that experimental use to reduce to practice is okay.
Posted by Patent Hawk at 6:58 PM | Prior Art
Dealing with KSR Chat
K&L Gates is hosting a webinar on "Strategies for Dealing with Obviousness Rejections by the PTO in the Aftermath of KSR." If you haven't gotten enough tips on playing cards with Obzilla from the Patent Prospector, sign up.
August 18, 2008
In the Aorta
Dr. Jan K. Voda, M.D., sued Cordis for infringing two catheter patents: 5,445,625 & 6,083,213, getting a 7.5% royalty, and even enhanced damages and attorneys fees for willfulness. In light of eBay, Voda overreached for a permanent injunction. In a ruling replete with succinct case law infusions, appeal of most everything found the district court ruling in the right vein, except, most notably, willfulness in light of Seagate.
Posted by Patent Hawk at 11:16 AM | Injunction
August 14, 2008
Whalen et al faced PTO patent board appeal on a chemical composition for embolizing an aneurysm. In a precedential opinion, the BPAI clarified the boundaries of inherency, and reinvigorated the seemingly orphaned stepchild of Queen KSR, grande dame TSM.
August 3, 2008
The United States has a foolish first-to-invent priority date system for U.S. applicants, but refuses to recognize the filing or invention date of foreign applications for the purposes of prior art, with the infinitesimal exception of the inscrutable 102(e)(2).
July 21, 2008
Eisai sued Dr. Reddy's Labs and Teva for infringing 5,045,552 after the two filed ANDAs to make a generic version prior to patent expiration. '552 claims a digestive antacid. Eisai overcame obviousness and inequitable conduct arguments to prevail. In its affirmation, the CAFC elucidated the current standard for chemical obviousness.
July 14, 2008
With case law changing like a fashion model working the runway, Thomson had time on its side in slipping the surly bonds of patent infringement. Muniauction asserted 6,161,099, claiming auctions using a web browser. Thomson lost a jury trial, found willfully infringed, faced $77 million in damages and an injunction. On appeal, the auction patent action was retold, and the damage unsold.
Posted by Patent Hawk at 5:32 PM | Prior Art
July 13, 2008
Not Invented Here
35 U.S.C. §102 - "A person shall be entitled to a patent unless - ... (f) he did not himself invent the subject matter sought to be patented..." §102(f) dates to the 1836 Patent Act, and U.S. case law predates statute. Does §102(f) mean what it says? - That a patent is invalid if not invented by a patent applicant. If so, why is it not applied as such? If not, why not?
June 19, 2008
Wily guys Mork & Beaty of Scanner Technologies got semiconductor packaging inspection patents. I thought it was Mork and Mindy, but I was wrong again. In the patenting process, they got hot under the collar about a competitor's product, hastening prosecution with a "make special" petition. Enforcing the patents, which were about ball grid arrays (BGA), turned out to be not such a ball. Defendant ICOS fought back with an affirmative defense of bad juju, patent street jive for inequitable conduct. Courts love street jive. Works every time. Well, not this time. At least, not for that.
June 14, 2008
The Patent Prospector plastered the Supreme Court for its inept KSR ruling regarding obviousness. For those wishing to visit old stomping grounds, Lewis & Clark Law School held an Obzillafest last October, though they were too stiff to call it that. Insomniacs may get some relief, as well as insight, from the collected works.
Posted by Patent Hawk at 7:24 PM | Prior Art
June 1, 2008
Thursday, Stanford University had three HIV-monitoring patents invalidated in summary judgment, letting Roche off the hook. Northern California Judge Marilyn Hall Patel ruled that the Stanford patents were obvious in light of a 1991 prior art article.
May 2, 2008
Finite Genus Killer
Xerox filed a patent related to electrophotography. The examiner piled on §103(a) combos. Appeal before the BPAI, arguing against 'obvious to try.' The issue was whether a "claimed species is obvious over prior art which discloses a genus containing the species." Obvious if the genus is defined by a "finite number" of possibilities, and the prior art does not teach away. KSR strikes again.
April 20, 2008
Finisar sued DirecTV in East Texas for infringing 5,404,505, garnering from a jury a $78.9 million reasonable royalty damages award for willful infringement. The district court tacked on $25 million while denying injunctive relief. On appeal, a claim construction error vacated the verdict, as well as raising from the grave potentially invalidating prior art.
Posted by Patent Hawk at 12:31 AM | Prior Art
April 17, 2008
Zenith has a couple patents (5,495,301; 5,502,513) for TV remote controls for hospital room use. Zenith sued PDI for infringement. PDI won a summary judgment of prior art invalidity on claim 1 of '301, and non-infringement on both patents. Zenith appealed. Herein reminders that: 1) practicing the prior art does not prove anticipation; 2) determining anticipation by public use doesn't require an enablement finding. "We must simply determine whether the public use related to a device that embodied the invention."
Posted by Patent Hawk at 2:49 AM | Prior Art
April 4, 2008
Microsoft and its counsel, including Theodore B. Olson, repeatedly employ deception in petitioning the Supreme Court to lower the burden of proof for invalidating patents, twisting SCOTUS' own words. As the Supreme Court observed, efforts by Microsoft and other mega-corporations of its ilk to decimate patent protection "stifle, rather than promote, the progress of useful arts." KSR, 127 S. Ct. at 1746 (citing U.S. Const., art. I, § 8, cl. 8).
April 1, 2008
And = Or
Mylan tripped the ANDA wire, triggering a lawsuit from Ortho-McNeil for infringing 4,513,006, covering topiramate, an accidentally discovered anticonvulsant. Mylan got a migraine over a claim construction that defined "and" as "or." In a rare fruitless incantation, Mylan invoked the sacred patent killer Obzilla, who was scared off this episode by a rare sighting of hindsight reasoning. TSM, seldom seen onstage since the coming of Obzilla, played a cameo role.
Posted by Patent Hawk at 2:43 AM | Claim Construction
March 28, 2008
Agrizap's 5,949,636 claims an electrocution rat killer. As CAFC Judge Moore rhapsodized:
When the hapless pest makes contact with a high voltage electrode and a reference electrode, its body creates a leakage current that completes an electric circuit and triggers a generator. The generator then produces a voltage and current of sufficiently high magnitude to send the pest towards its demise.
Over the '636 product Rat Zapper, pest control distributor Woodstream and Agrizap dramatized a theatre of irony: Woodstream played the rat, and sent the patent pest to its demise.
Thomas Edison has been credited with inventing sound reproduction, duly granted U.S. patent 200,521 on an 1877 filing. Newly revived is the work of "Édouard-Léon Scott de Martinville, a Parisian typesetter and tinkerer who went to his grave convinced that credit for his breakthroughs had been improperly bestowed on Edison."
March 23, 2008
WikiPatents and the USPTO-condoned Peer to Patent projects are attempts at solutions looking for a problem. The implicit conjecture is that patent examiners are limited in their search capabilities, and a helping hand is just what they need. Nothing could be further from the truth. By fostering the impression that examiners need such help, a fake Band-Aid is applied in the wrong place. The wound is PTO management.
Posted by Patent Hawk at 1:50 AM | The Patent Office
March 7, 2008
CIP Not A Divisional
Teva's ANDA for a generic version of Pfizer's Celebrex, an arthritis treatment, predictably met with infringement assertion: 5,466,823; 5,563,165; and 5,760,068. Teva lost, and appealed, whereupon the CAFC found double patenting in the '068. Safe harbor for divisionals under 35 U.S.C. § 121 applies only to divisionals, not CIPs, which '068 was.
Posted by Patent Hawk at 2:56 PM | Prior Art
March 5, 2008
Bayer tried to take Barr down for its aspirant generic version of oral contraceptive Yasmin®; using 6,787,531 as the preventive pill. Following trial, springing from the bushes of a 96-page opinion, Obzilla claims another victim.
Posted by Patent Hawk at 5:54 PM | Prior Art
February 21, 2008
On-Sale Bar Ruffle
In reply to potential customer Sealy, a bed mattress maker, Atlanta Attachment developed a sewing machine for automatically creating gusset rufflers. There was a verbal understanding of confidentiality. Over time, Atlanta Attachment sent prototypes to Sealy, in September 2000 invoicing Sealy for the third of four prototypes ultimately delivered. The last prototype was but a minor jigger difference from the third.
Posted by Patent Hawk at 1:05 PM | Prior Art
January 30, 2008
American Seating sued USSC Group for infringing 5,888,038, claiming a wheelchair restraint system for buses. On the second wheeling to the appeals court, invalidity by prior public use and lost profits damages were the issues.
Posted by Patent Hawk at 2:21 AM | Prior Art
January 22, 2008
KSR obviousness claims another victim. Sang Su Lee, one of the longest running ex parte appeals, at 14 years (the first BPAI opinion was 1994), was knocked out in the second round by the CAFC in a simple Rule 36 order (a per curiam affirmance without an opinion: CAFC 2007-1191). Round one vacated the BPAI decision for failing to specify a motivation for a combination obviousness finding. Motivation became passé as KSR sucked the oxygen out of the CAFC's longstanding teaching-suggestion-motivation (TSM) test.
January 11, 2008
Jay Wahlquist of Fogg & Powers offers Patent Pal, a web browser toolbar tuned to patent search and news. There are numerous patent search engines available in cascading drop-down menus, covering patent databases worldwide; as well, other databases of patent information oriented towards prosecutors. There's also a newsfeed for patent blogs. Nice work, and definitely worth checking out. Thanks Jay!
Posted by Patent Hawk at 1:23 PM | Prior Art
January 10, 2008
Not So Obvious
KSR was a radical reinterpretation of the obviousness statute, 35 U.S.C. §103(a). Now codified as case law without prospect of legislative correction, so much has become obvious that only a few avenues of claiming novelty are left. But those paths are becoming well worn.
January 8, 2008
SRI sued Internet Security Systems and Symantec for cyber security and intrusion detection patents. Summary judgment that SRI had created its own anticipatory prior art was upheld. Prior art is enabled as anticipatory if it suggests the invention to one of skill in the art. In a rehash of what constitutes public accessibility, a 2-1 appeals court majority fails to follow federal rule and its own precedent.
December 18, 2007
Citing Prior Art
In many instances, the proposed IDS rules will create a prior art search dilemma for patent prosecutors. The new rules require extensive analysis of cited art, reportage that characterizes the claims and thus invites prosecution estoppel, hence hampering enforcement potential, particularly applying the doctrine of equivalents. In a field crowded with art, to minimize cost while maximizing patentability under the new IDS rules, a crafty prior art strategy is imperative.
October 23, 2007
It is now apparent that in the view of the USPTO, KSR went much further than previously thought in eroding the certainty established by decades of Federal Circuit precedent. Taken together, KSR and the Guidelines result in an unfair system where the spirit of Article 1, Section 8, Clause 8 of the Constitution has been undermined. Furthermore, in some fields of art it seems as though only pioneering inventions are likely to be patentable.
October 21, 2007
A flaw of temporal displacement, but very human: in hindsight, most everything appears obvious. Prior to the Supreme Court KSR ruling, patentable inventions correlated to real-world invention: incremental, and combinatorial. As Thomas Jefferson, the first patent board director, observed, new inventions spring from previously unthought combinations. Until KSR, concern about hindsight reasoning rendered courts circumspect for a metric that grappled with this subtle and pernicious tendency. No more.
October 13, 2007
Translogic Technology sued Hitachi and Renesas over electronics multiplexer patent 5,162,666. Beginning shortly after assertion, Hitachi threw mud until it stuck: filing a series of five reexamination requests, later consolidated into one. The reexam and litigation trains rolled on dual tracks. The patent having withstood invalidity assault in court, Translogic scored an $86 million damages award from an Oregon jury, and a permanent injunction from the judge. But the reexam examiner found the patent combo-obvious; a finding upheld by the patent appeal board. Hitachi appealed the court decision, while Translogic appealed the patent office invalidation.
October 10, 2007
The Obvious Guide
“The Guidelines stress that the familiar factual inquiries announced by the Supreme Court in its much earlier decision, Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), remain the basis for every decision regarding obviousness,” noted Commissioner for Patents John Doll. “That is, patent examiners will continue to consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness.”
September 27, 2007
Reeking of nasty anti-patent bias, evidence of high-level incompetence at the USPTO trickles in. Today, the appeals court caught the patent appeals board (BPAI) equating "flexible" with "rigid."
September 19, 2007
OrthoAarm held patent 6,257,883, claiming a bracket for orthodontic braces. OrthoArm sued distributor American Orthodontics for infringement; they settled for a 4% royalty. American got manufacturer Adenta to chip in half of the royalty payment. Adenta then got it into its head that the patent was no good, and advised American and OrthoArm it was going to stop paying royalties. American replied by letter that would be naughty; that American would "pursue its available legal remedies to protect its rights." So Adenta filed for declaratory judgment in the Eastern District of Wisconsin, that '833 was invalid and unenforceable.
September 12, 2007
Death Certificate Reissue
The CAFC took the unusual step of reissuing its July 11 non-precedential obviousness wallop as a precedential decision, so it could be used to maintain the KSR fiction that the statutory "ordinary skill in the art" has an inventor's level of skill and education, as well as being omnificent.
Posted by Patent Hawk at 11:30 AM | Case Law
September 11, 2007
Aventis sued Lupin for infringing 5,061,722 after Lupin filed an FDA drug application (ANDA). '722 goes to a blood medication, Altace. District court summary judgment found infringement under the doctrine of equivalents, and a pre-KSR bench trial rendered the patent "not invalid," as the appeals court backhandedly put it. Which is to say, on appeal, the CAFC took the double negative out, finding the patent "would have been obvious." KSR strikes again.
August 5, 2007
USTPO Obviousness Guidelines
Hal Wegner thinks he snagged an unofficial copy of the summary of the PTO examiner guidelines for determining obviousness. It may not be the train, but it sure looks to be where the tracks are being laid. Here it is.
August 1, 2007
Whichever Way It Folds and Holds
Icon Health & Fitness appealed to the CAFC a BPAI reexamination ruling invalidating 5,676,624, which claimed a folding treadmill that used a gas stabilizing spring to hold itself in place. No surprises were sprung.
Any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. - KSR
Posted by Patent Hawk at 6:05 PM | Prior Art
July 31, 2007
The KSR Trend
KSR is taking a mounting toll on patents and patent applications. To soon for hard statistics, but the trend is palpable. The Wall Street Journal today notes the killing fields that courts are becoming in patent litigations. The patent office has become an obviousness connoisseur, savoring the many ways of snuffing applications like wind-blown candles, based on KSR-provided attack angles.
Posted by Patent Hawk at 1:26 AM | Litigation
July 24, 2007
Dealing with KSR
The talk at the recent annual convention of the National Association of Patent Practitioners (NAPP) was about arguing past prosecution obviousness rejections in light of KSR.
Posted by Patent Hawk at 12:39 PM | Prosecution
July 18, 2007
Chilling Invention at the PTO
A trilogy of recent precedential decisions by the USPTO Board of Appeals and Interferences (BPAI) demonstrates the extent to the which the Supreme Court KSR obviousness decision raised the bar to patentability, providing patent examiners ready harpoons to puncture claimed inventions with aplomb.
July 11, 2007
Daiichi Sankyo collared Apotex for infringing 5,401,741, claiming ear infection treatment. Apotex appealed (CAFC 06-1564), claiming invalidity by obviousness. In a CAFC business-as-usual non-precedential decision, '741 takes it in the ear, finding "the ordinary skill in the art" to be, well, the inventors.
Posted by Patent Hawk at 12:04 PM | Prior Art
July 9, 2007
Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress. - KSR
All other users having taken licenses, PharmaStem sued the remainder six companies for infringing two patents related to treatment for compromised blood and immune systems. In yet another 2-1 split decision, a CAFC majority finds obviousness where none had been found before (CAFC 05-1490) -
The inventors merely used routine research methods to prove what was already believed to be the case. Scientific confirmation of what was already believed to be true may be a valuable contribution, but it does not give rise to a patentable invention.
- while the dissent finds the hindsight demon unleashed by KSR a vampire, sucking the lifeblood from a deserved patent.
The court's approach reflects misperception of the scientific process as well as the patent purpose. Scientific methodology usually starts with a hypothesis based on what is already known; the record shows that several scientists mentioned the idea of rebuilding destroyed blood cells. However, none achieved this long-sought goal, and the record shows the extreme skepticism concerning even the possibility of this achievement. Nonetheless, my colleagues deny the value of this long-sought result. Instead, my colleagues simply reweigh selectively extracted evidence, ignore the actual peer response and acclaim at the time these inventions were made, reject the testimony and admissions of the defendants, and use present knowledge of the inventors' success to find that it was obvious all along.
Posted by Patent Hawk at 7:35 PM | Prior Art
June 25, 2007
Curt Rose, associate general counsel for Hewlett-Packard, in support of the much ballyhooed Peon-to-Patent pilot program, blathered, "We don't want to get patents issued that aren't valid." One has to wonder why HP, IBM, Intel, and other huge computer technology companies are so penny-wise and pound-foolish to use amateurs for patentability searches when they ought to, and can easily afford to, employ professional prior art searchers.
Posted by Patent Hawk at 12:43 AM | Prior Art
June 19, 2007
Up the Sleeve
In a heavy-handed non-precedential ruling, the appeals court finds potential for obviousness where the district court found none (CAFC 07-1044). The Supreme Court's KSR mandate that obviousness is a matter of law, and thus within the province of summary judgment by a district court, gets the CAFC de novo treatment, the appeals court discovering issues of fact. Chief Judge Michel, ready patent killer, practices his chops.
Posted by Patent Hawk at 12:15 AM | Prior Art
June 15, 2007
KSR turned traditional patent application drafting into suicide. Backgrounds logically provided a historical context for one or more problems to be solved, the inventive solution being the basis for the claims. Post-KSR, problem-solving storytelling now provides a roadmap to apply hindsight in invalidating a patent as obvious.
Hal Wegner has analyzed the current status of case law regarding chemical compound obviousness, and holds that "KSR and Pfizer v. Apotex manifest fundamental misunderstandings of chemical practice case law."
Posted by Patent Hawk at 12:18 AM | Prior Art
May 30, 2007
Uncle Sam Wants You... To Examine Patent Claims
Most poignantly, in an aside, Hogge slaps the Supreme Court for not giving patents the presumption of validity that they have by law (§282):
[M]any people who read KSR will wonder why the Supreme Court applied the "preponderance of evidence" standard instead of the correct "clear and convincing" standard required for invalidity analysis. ("If a person or ordinary skill can implement a predictable variation, §103 likely bars its patentability." Id. at 1740.)
Posted by Patent Hawk at 12:15 AM | Prior Art
May 29, 2007
Posted by Patent Hawk at 3:40 PM | Prior Art
Motionless Keyboard (MKC) sued Microsoft, Nokia and Saitek Industries for infringing "motionless" keyboard patents 5,178,477 and CIP 5,332,322. The district court figured out non-infringement based upon a proper claim construction, but missed on public use invalidity, and misunderstood terminal disclaimers. The appeals court set it straight (CAFC 05-1497).
Posted by Patent Hawk at 3:10 PM | Prior Art
May 25, 2007
Upside Down Down Under
In a unanimous decision Wednesday, recognizing the value of patent protection for incremental invention, the Australian High Court ruled in Lockwood v Doric that "a "scintilla of invention" remains sufficient in Australian law to support the validity of a patent." "'Obvious' means 'very plain'." Most notably, unlike the arrogantly parochial U.S. Supreme Court, relying upon its own cogitations and no other, the Australian High Court draws from understanding and precedent worldwide.
May 22, 2007
Non- En Banc Cacophany
Pfizer appealed the CAFC obviousness invalidation of 4,879,303 (see The Salt of Obviousness), asking for an en banc review. A majority rolled it as no dice (CAFC 06-1261o), but there was a brouhaha of dissent, focused on the court overstepping its bounds, both in disregarding trial courts and in finding obvious that which was not, further withstanding the momentous repercussions.
Posted by Patent Hawk at 1:31 PM | Prior Art
"True creativity is characterized by a succession of acts, each dependent on the one before and suggesting the one after." - Edwin Land, Polaroid Founder
Posted by Patent Hawk at 12:33 PM | Prior Art
May 14, 2007
The Dynamics of Obviousness
The Supreme Court ruling in KSR v. Teleflex unleashed wide-ranging dynamics: diminishing the value of patent portfolios, helping and hurting start-up companies, and promoting generic drugs.
Posted by Patent Hawk at 10:30 PM | The Patent System
May 9, 2007
Ordinary Skill in the Art
In 1941, the Supreme Court required a "flash of genius" for a patent to stand. Congress lowered that high standard in 1952 to non-obviousness to one with "ordinary skill in the art." Now again, more than interpretation, the Supreme Court exceeded the law in its KSR v. Teleflex decision. In its own flash of unpatentable creative insight, SCOTUS redefines the statutory "person having ordinary skill in the art" into someone omnificent and possessing comprehensive technical expertise.
Common Sense Turns Wily
The echo of SCOTUS KSR, the domino effect of invalidation by obviousness, has begun. For example, translating a mechanical toy to an electronic version with additional features is old hat. In Leapfrog v. Fisher-Price & Mattel, the CAFC upholds a district court ruling of obviousness that's a real stretch. An electronic child learning toy is obvious by combination of a mechanical version disclosed in a prior art patent, a product with a "slightly different mode of operation," and, to get the screen reader, well, there were screens around; no particular prior art need be cited. "Substantial evidence of commercial success, praise, and long-felt need" yield no counterweight "given the strength of the prima facie obviousness showing."
Posted by Patent Hawk at 11:00 AM | Prior Art
May 3, 2007
USPTO KSR Memo
Margaret Focarino, USPTO Deputy Commissioner for Patent Operations, issued a memo of the salient points of the Supreme Court's KSR v. Teleflex ruling. As guidance for examination, the hazy Graham four-factor test predominates, while the CAFC's more structured TSM test is demoted to "a helpful insight." Examiners are advised to state their reasoning for an obviousness rejection.
Posted by Patent Hawk at 5:55 PM | Prosecution
April 30, 2007
In its landmark decision of KSR v. Teleflex, reversing the appeals court, the Supreme Court has broadened the interpretive scope of 35 U.S.C. § 103(a), the obviousness clause. Patentable subject matter is thus constricted. In the large, in light of the ruling, a known combination of elements are only patentable if their combined functionality yields the unexpected. What was once impermissible hindsight is now permissible.
April 23, 2007
Case law broadening of prior art anticipation is bloating, and badly needs gas pills in the form of statutory guidance. But Congress, drafting patent reform in secret thrall to select corporate interests, is all deaf ears.
In a radical new precedent, prior art can anticipate a process even though unrecognized at the time. In a bitter 2-1 split decision, the appeals court (CAFC 04-1562) affirms a district court ruling of "inherent anticipation."
April 19, 2007
Hot Air, No Gas
Advanced Technology Materials (ATMI) sued Praxair for infringing 6,343,476 & 6,101,816, going to gas & fluid storage containers. The New York district court judge summarily pitched the case owing to obvious invalidity (§103). ATMI appealed (CAFC 06-1540) to find out what an expert witness was worth.
Posted by Patent Hawk at 11:47 AM | Prior Art
April 1, 2007
Uncertainty is Not Obvious
Indeed, it often requires as acute a perception of the relations between cause and effect, and as much of the peculiar intuitive genius which is a characteristic of great inventors, to grasp the idea that a device used in one art may be made available in another, as would be necessary to create the device de novo. And this is not the less true if, after the thing has been done, it appears to the ordinary mind so simple as to excite wonder that it was not thought of before. The apparent simplicity of a new device often leads an inexperienced person to think that it would have occurred to any one familiar with the subject; but the decisive answer is that, with dozens and perhaps hundreds of others laboring in the same field, it had never occurred to any one before. The practiced eye of an ordinary mechanic may be safely trusted to see what ought to be apparent to every one. - C & A Potts & Co. v. Creager, 155 U.S. 597, 607-08 (1895).
Posted by Patent Hawk at 12:00 AM | Prior Art
March 28, 2007
Now that major corporations, such as IBM, Microsoft, and General Electric, have bought into "community" patent application review, as a seemingly altruistic but really self-interested way of appearing to care about improving patent quality, they're figuring the gotcha': willful infringement. In other words, top corporations are led by folks who have more money than brains to think through the legal consequences of their actions.
Posted by Patent Hawk at 8:35 PM | Prior Art
March 24, 2007
The Salt of Obviousness
Apotex's successful appeal against Pfizer (CAFC 06-1261) points at the near chaotic state of anticipation in case law, ad hoc consideration of what constitutes an obvious innovation, as opposed to a patentable invention. In the case of Pfizer's Norvasc compound, invalidity challenges had been rejected by three different district courts before the CAFC pulled an upset, declaring the mixture obvious. The court elucidates where presumptions lie with regard to obviousness, what constitutes "reasonable expectation of success" has to do with what would have been expected, that the threshold of "undue experimentation" is beyond routine testing, that "obvious to try" isn't good enough, and that predictability has nothing to do with it (huh?). "[P]atentability is not imparted where ‘the prior art would have suggested to one of ordinary skill in the art that this process should be carried out and would have a reasonable likelihood of success.’" Creating a formula to promote litigation, to the appeals court, obviousness is like pornography: you only know it when you see it. And, like good pornography, you better look it over carefully.
Posted by Patent Hawk at 10:00 PM | Prior Art
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
March 19, 2007
Copyright Infringement Safe From Patent Infringement
6,614,729 claimed a digital live event recording system, designed to "virtually eliminate the problem of illegal bootlegs." Evil bastards! So the Electronic Freedom Foundation (EFF) shot it down.
Posted by Patent Hawk at 12:01 AM | Prior Art
March 13, 2007
Ready for Patenting?
Ultra Flex sued PolyPro for infringing 6,186,934 and 6,428,208, going to plastic display bags with “chip hooks” for hanging the bags on retail display racks. Infringement was undisputed, but PolyPro won summary judgment via one-year on-sale bar (35 U.S.C. §102(b)). The appeals court (CAFC 06-1497) ruled that summary judgment was premature, owing to factual dispute as to whether Ultra Flex's invention had been reduced to practice, and thus "ready for patenting," when Ultra Flex started selling the product.
Posted by Patent Hawk at 4:42 PM | Prior Art
February 23, 2007
The Cup Not Runneth Over
Nouri Hakim sued Avent for infringing 6,321,931 and 6,357,620, which claim a spill-proof drinking cup. Avent dodged the infringement stains by a narrow claim construction and some Italian prior art. Hakim appealed (CAFC 05-1398), but had no juice.
Posted by Patent Hawk at 11:23 AM | Claim Construction
February 14, 2007
Intent to Deceive
Cargill, in its assertion of canola oil patents against Canbra Foods and Dow Agrosciences, slipped on oily slicks: on-sale bar and inequitable conduct.
Posted by Patent Hawk at 1:04 PM | Inequitable Conduct
February 12, 2007
Patent Monkey is a new, free patent search site by spokesperson and co-founder Paul Radcliff, erstwhile patent examiner. If offers PDF downloads, including bulk downloads. It also has the unique feature of showing current patent status. It's a very promising start. What Patent Monkey currently lacks is a boolean search engine; its advanced search page is a blank, with the message "coming soon".
February 9, 2007
Dippin' Dots owns 5,126,156, which claims a process for making ice cream. "The Dippin’ Dots brand is known to patrons of amusement parks, stadiums, shopping malls, and the like." After Dippin's distributors turned competitors, Dippin' flipped into patent enforcement, suing left and right. Counterclaim included antitrust, on what defendants called a fraudulently acquired patent. Claim construction, infringement, prior art (including a newly minted definition of "obvious"), inequitable conduct; it's all in the dip. (CAFC 05-1330)
Posted by Patent Hawk at 3:14 PM | Claim Construction
January 30, 2007
Sensitech is exclusive licensee of RE36,200; Donald W. Berrian, inventor. Sensitech sued Time 'N Temperature (TNT) for infringement of '200. On summary judgment, the district court found the patent valid, and infringed, and placed an injunction on TNT. The appeals court readily ruled that was wrong (CAFC 06-1404).
Posted by Patent Hawk at 2:07 PM | Prior Art
December 26, 2006
Generic drug makers IVAX Pharmaceuticals, Dr. Reddy's Laboratories, and Teva Pharmaceuticals filed an ANDA for the patented drug olznapine, used to treat schizophrenia. So, naturally, patent owner Eli Lilly sued for infringing 5,229,382. In a 221-page analysis following a 2.5 week bench trial, '382 was found valid and infringed. In a last hurrah, the generic defendants appealed, arguing one last time invalidity and inequitable conduct (CAFC 05-1396).
Posted by Patent Hawk at 8:03 PM | Prior Art
December 18, 2006
On-Sale Bar Kiosk
Plumtree Software sought, and got, a declaratory judgment against Datamize, convincing a district court to summary judgment invalidity under the on-sale bar doctrine, 35 U.S.C. § 102(b), killing 6,460,040 and 6,658,418, continuations of 6,014,137. Two issues on appeal (CAFC 06-1017): whether Plumtree had "reasonable aprehension" to file for declaratory judgment, and whether the on-sale bar doctrine had been met.
Posted by Patent Hawk at 11:59 AM | Prior Art
December 14, 2006
Patent Search Engines
There are a few free patent search engines available. Google, having kept the scanning gnomes up past bedtime, has all issued U.S. patents since Columbus was found to be infringing. There are also FreePatentsOnline and PatentReader, as well as the venerable USPTO search. Not exactly fun entertainment for the whole family, nor particularly industrial-strength.
December 9, 2006
In April 2005, Golden Bridge sued Nokia & Lucent in the patent enforcement capital of the United States, the Eastern District of Texas, for infringing 6,574,267, which claims spread-spectrum, multiple channel transmission to wireless devices. Thursday, Golden Bridge got shot out the saddle.
Posted by Patent Hawk at 10:25 PM | Prior Art
November 29, 2006
Even before the Supreme Court further mucks up the § 103(a) obviousness standard via its Teleflex v. KSR ruling, fear by the appeals court of the Supreme Court mucking up the obviousness standard has already warped interpretation of the law.
Posted by Patent Hawk at 6:44 PM | Prior Art
November 28, 2006
Supreme Court Obviousness Motivation
Excerpts from the oral arguments before the Supreme Court in KSR v. Teleflex, KSR seeking to upend the § 103(a) obviousness standard; the following excerpts giving a flavor of the proceedings.
Posted by Patent Hawk at 4:31 PM | Prior Art
November 20, 2006
Anticipation Needn't Be Effective
Generic drug-maker Impax filed an ANDA to make riluzole tablets, which are used to treat amyotrophic lateral sclerosis (ALS). In doing so, it was heading for a confrontation with patent holder Aventis Pharmaceuticals. So Impax preemptively slammed Aventis patent 5,527,814 for a declaratory judgment of noninfringement, invalidity, and unenforceability. Impax got nowhere crying noninfringement or inequitable conduct, but, on appeal, its prior art argument got traction with the CAFC (05-1313), after having failed with the district court. The CAFC ruled that, to anticipate, a prior art reference only has to enable creation of a drug for treatment, but need not go so far as to indicate that treatment using the drug would be effective.
Posted by Patent Hawk at 8:13 PM | Prior Art
November 16, 2006
Optivus Technology and Loma Linda University Medical Center sued Ion Beam Applications (IBA) for violation of the Florida Deceptive and Unfair Trade Practices Act, violation of the California unfair competition law, violation of the Lanham Act, and for intentional interference with prospective economic advantage. Oh, yeah, and patent infringement: 4,870,287 and 5,260,581. A slightly mixed ruling by the CAFC (05-1518), but the patents were hit with prior art death rays.
Posted by Patent Hawk at 1:58 PM | Prior Art
November 9, 2006
Apparatus versus Process Use
The appeals court ruled today in Abbott Labs v. Baxter Pharmaceuticals. This was the second round of appeals of Abbott's assertion of 5,990,176 (CAFC 06-1021). In the first round, the CAFC remanded with a different claim construction. In this episode, Abbott appealed noninfringement, and Baxter cross-appealed validity. What the appeals court found was old news: new uses for known processes may be patented, but a prior art device cannot be patented, even if new uses of it are found.
Posted by Patent Hawk at 12:22 PM | Prior Art
November 8, 2006
SRI sued Symantec and Internet Security Systems for infringing four patents related to real-time network surveillance. The defendants found some damning prior art by the inventors in what SRI termed "dumb luck." Dumb indeed.
Posted by Patent Hawk at 5:03 PM | Prior Art
October 27, 2006
Aussie Dr. Alexander O'Neil invented a urinary catheter (4,652,259) that reduced the risk of urinary tract infection by limiting the length of the catheter sheath to stop short of a natural pressure barrier in the bladder. Dr. O'Neil also stopped short of disclosing the known best mode in his 1979 patent application, finally rectifying the specification in his 1985 CIP. But O'Neil had published an article with specifics in 1982. [CAFC 05-1241]
Posted by Patent Hawk at 11:35 AM | Prior Art
October 19, 2006
20/20 Take 2
While others rattle on with their own bias, Professor Gregory Mandel of Albany Law School attacks hindsight bias with empirical research and well-reasoned analysis. "Humans are cognitively unable to prevent knowledge gained through hindsight (here, that the invention was achieved) from impacting their analysis of past events, as required for the proper ex ante analysis. Because of this hindsight bias, individuals routinely overestimate the ex ante predictability of events after they have occurred." Mandel's paper is crucial reading for anyone not blinded by their own bias to hindsight.
Posted by Patent Hawk at 8:18 AM | Prior Art
October 11, 2006
On the Path to Obviousness
Dennis Crouch reports in Patently-O on second-round briefs in KSR v. Teleflex, the first case on obviousness before the Supreme Court in 30 years. Dennis crafted a wonderful summary of the issue that is essential reading. But of course there's Patent Hawk's two cents...
Posted by Patent Hawk at 10:36 AM | Prior Art
October 4, 2006
Dyeing the Prior Art
Every obviousness case it gets nowadays, the CAFC polishes its chops by elaborating its flexible interpretation of anticipation via prior art combination, preening to the Supreme Court for the upcoming KSR v. Teleflex battle. In Dystar v. Bann (and Patrick), a patented dyeing process was found valid and infringed by the district court judge, who scalded the defendants a whopping $90,000 in damages (that's right, $90,000). Reeling, they appealed (CAFC 06-1088).
Posted by Patent Hawk at 12:03 AM | Prior Art
September 21, 2006
Publish, Then Discover
Nichols Institute Diagnostics sued Scantibodies Laboratory for infringing 6,030,790. The problem was that the inventors had published an early abstract of work later patented. The delay in patenting was caused by not realizing the significance of what they had discovered and published. Oops.
Posted by Patent Hawk at 12:10 AM | Prior Art
September 19, 2006
Open Source Development Labs (OSDL) has a project called Open Source as Prior Art (OSPA), intended to document its source code to improve its potential usage as patent prior art. Maybe a lot of buck for the bang, but nice idea, at least in concept. Not according to Richard Stallman, founder of the Free Software Foundation.
Posted by Patent Hawk at 2:13 PM | Prior Art
September 12, 2006
Last week's CAFC obviousness ruling in Alza v. Mylan highlighted the importance of expert witness testimony in informing the court as to what constituted one "skilled in the art," a standard for permissible prior art combination, standing on the ridge above the slippery slope to impermissible hindsight. Another Appeals Court ruling cautions in the priming of expert witness testimony as discoverable.
Posted by Patent Hawk at 4:38 PM | Prior Art
September 7, 2006
Supreme Court On Open Source Software
Information Week's Charles Babcock writes in the September 4 issue, "Supreme Court To Hear Arguments On Software Patents And Open Source." Did you know that KSR v. Teleflex is about open source software?
Posted by Patent Hawk at 12:01 AM | Prior Art
September 6, 2006
Implicitly & Expertly Obvious
Mylan Labs & Impax filed drug applications (ANDAs) for generic versions of the orally taken anti-incontinence drug oxybutynin. That triggered a patent infringement suit by Alza, which holds the relevant patent: 6,124,355.
The district court found non-infringement, and invalidity by anticipation and obviousness in light of the prior art. Getting another bite at the apple to assure the Supreme Court for its upcoming KSR v. Teleflex case that the status quo is copasetic, the CAFC honed its obviousness chops (Alza v. Mylan 06-1019).
September 2, 2006
Gee kids, aren't patents fun! Save 'em, trade 'em, collect 'em. Amass a portfolio and assert against major corporations until they cry for patent reform. Rock the cradle, but don't try for an injunction, the courts won't bite on that anymore; just politely demand millions in compensation.
But, gosh dad, what if I'm not smart enough to invent? I want to play! Well, son, you can; just get a stick and poke at the little patent varmints. Now, Wiki Patents Community Patent Review hands you the stick. Piss away your time playing amateur prior art searcher. You'll feel good that you're improving patent quality, helping the great and powerful Patent Wizard of Oz. Pay no attention to that man behind the curtain; maintain the illusion that all is well while you serve the motherland.
Posted by Patent Hawk at 3:50 PM | Prior Art
August 30, 2006
One might get the impression, for all the ruckus over KSR v. Teleflex in front of the Supreme Court, that 35 U.S.C. §103(a), the prior art obviousness clause, is broken. Not so. §103 is badly drafted, but it has teeth as currently interpreted by the Appeals Court. If you think its teeth need further straightening, consider this orthodontics case: Ormco v. Align (CAFC 05-1426).
Posted by Patent Hawk at 12:00 PM | Prior Art
August 29, 2006
Unbiased rational logic is a rare bird. Our minds offer a veneer of abstraction processing over a reptilian brain bathed in emotional opium. With regard to patent law, the bias towards impermissible hindsight in denigrating invention is incontrovertible. To wit, the vast majority of amici briefs in KSR v. Teleflex have been displays of wishful thinking at best, corrupt rhetoric at worst; regardless, confusion of delusion that hindsight can be hindered by anything other than objective evidence.
Posted by Patent Hawk at 1:42 PM | Prior Art
July 21, 2006
Backyard Prior Art
Jumpsport sued Jumpking, and other defendants, for infringing trampoline patents 6,053,845 and its continuation 6,261,207. Mixed verdict; the item of interest is the continuation of broad latitude in what constitutes prior art; in this case, public use.
June 26, 2006
Becoming Less Obvious
This morning, the Supreme Court granted KSR's writ of certiorari in its appeal from infringing Teleflex's patents. At issue is whether prior art anticipation is obvious absent any suggestion or motivation to combine references. Many patented inventions are combinations of what had been previously been known, but the combination applied in a way hitherto unknown.
June 14, 2006
Game Call Totality
Primos sued Hunter's Specialties for infinging 5,520,567 & 5,415,578, for a product used by "outdoor enthusiasts" to deceive wildlife. Trial didn't go well for Hunter's: literal infringement, willfulness, inducement of infringement ('567), and infringement under the doctrine of equivalents ('578). The appeal didn't go well either. [CAFC 05-1001]
Posted by Patent Hawk at 12:56 PM | Litigation
May 30, 2006
In Teleflex v. KSR, the U.S. Solicitor General (SG) filed a vacuous brief in support of patent examiners and judges deciding a patent's validity on whim, with no supportive evidence.
May 9, 2006
Up the Creek
Old Town Canoe sued Confluence Holdings for infringing 4,836,963, which goes to a process for making plastic boat hulls by rotational molding. Confluence got a summary judgment of non-infringement based upon claim construction, but lost counterclaim motions on invalidity and enforceability. So the parties appealed the rulings that went against them. The CAFC (05-1123) found the district court had been hasty in some of its summary judgment rulings, glossing over disputable facts. And a well-reasoned dissent argued that the whole case was overdone.
Posted by Patent Hawk at 2:24 PM | Litigation
April 20, 2006
Accessible Prior Art
In Bruckelmyer v. Ground Heaters, the CAFC gives broad latitude to what constitutes "publicly accessible" prior art. The court decided that abandoned drawings of a foreign patent application were "publicly accessible," because the file history could be located from the published patent. The lynchpin seems to be whether the material, or even reference to the material, has been catalogued or indexed, not whether the material itself had ever been published.
Posted by Patent Hawk at 11:35 AM | Prior Art
April 14, 2006
Working Prior Art
Fabio Marino, with broad experience, and a specialist in strategic IP counseling, is moving to Orrick Herrington & Sutcliffe from Bingham McCutchen. Among other skills & talents, Mr. Marino has an appreciation for working prior art.
Posted by Patent Hawk at 3:44 PM | Prior Art
March 22, 2006
Leonard Kahn, trying to patent a reading machine for the blind, appealed his §103 rejection by the patent appeals board (PBAI) to the appeals court. The CAFC (04-1616) in this case further clarified the ground rules for obviousness rejection.
Posted by Patent Hawk at 12:01 PM | Prior Art
February 3, 2006
As Monty Python once quipped, no one expects the Spanish Inquisition, but here it is. In a second round of protracted litigation to establish priority of invention, i.e., legal first-to-invent status, Medichem v. Rolabo square off before the CAFC (05-1179, -1248) over the credibility of lab notebooks related to discovering the patented process for making loratadine, the active ingredient in the blockbuster allergy medication Claritin®. This is the second ruling in as many days from the Appeals Court relating to the anachronistic alchemy of having patent priority determination subject to tortuous legal complications at ungodly cost. More simply put, here's another compelling argument for a first-to-file patent priority regime.
Posted by Patent Hawk at 12:19 PM | Prior Art
January 26, 2006
The Cure for Junk Patents: Old Hat
The Wall Street Journal yesterday hit the nail on the head: "In Patent Disputes, A Scramble to Prove Ideas Are Old Hat." Silliness aside, and there are a lot of silly patents (see Patently Silly), junk patents most commonly originate because adequate prior art search isn't done during examination. To compound the problem, patent owners trot to court without vetting their wares, potentially costing millions in attorneys fees that can go up in smoke. For professional prior art searchers, finding old hats that kill patents is where the action is.
Posted by Patent Hawk at 12:03 AM | Prior Art
October 9, 2005
Veracity Requires Documentation
KSR International v. Teleflex is under consideration for review by the Supreme Court. The issue is the appropriate standard for prior art anticipation vis-à-vis 35 U.S.C 103(a), particularly combination of prior art references. In short, the current standard is that veracity requires documentation. There has been outcry to weaken that standard to allow speculation as a basis for invalidating a patent claim, replacing a reasonable standard of documented certitude with case-by-case subjectivity. What are they thinking?
Posted by Patent Hawk at 10:46 AM | Prior Art
October 6, 2005
Secret & Exploited
Mr. Egbert gave his future wife a corset with a feature that he patented two years after she began wearing the corset. Did his lady wearing his custom corset constitute "public use", and thus invalidate his patent? If a company develops a recombinant DNA biotechnology that it uses within the company more than a year before filing a patent, but doesn't sell a product using the technology, is that "public use", thus invalidating the patent under 35 U.S.C. § 102(b)? In Invitrogen v. Biocrest (CAFC 04-1273) we find out.
Posted by Patent Hawk at 12:02 AM | Prior Art
August 16, 2005
This won't make me hang up my prior art search spurs, but it's a smile: Prior-Art-O-Matic.
Posted by Patent Hawk at 12:09 AM | Prior Art
July 28, 2005
On-Sale Bar Fine-Tuned
The Federal Circuit Court of Appeals (CAFC) has tuned the on-sale bar standard for 35 U.S.C. §102(b) in its ruling of Electromotive Division of GM v. Transportation Systems of GE (CAFC 04-1412).
The relevant portion of §102(b), commonly called the on-sale bar, provides for invalidating a patent if "the invention was ... in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States".
Posted by Patent Hawk at 4:01 PM | Prior Art
July 27, 2005
It's still salad days where patent product prior art posted on the Internet might be useful anticipatory art. The problem is that companies continually update their sites with the latest offerings, shucking antecedents.
Posted by Patent Hawk at 11:47 AM | Prior Art
May 25, 2005
Mettling With Obviousness In Metal
Kenneth Harris and Jacqueline B. Wahl were trying to get a patent "claiming a nickel-based superalloy for turbine engine blades that experience high temperatures." Rejected by the patent office appeal board as obvious under 35 U.S.C. § 103, they pressed on, all the way to the Federal Appeals Court (CAFC) (04-1370).
Posted by Patent Hawk at 1:49 PM | Prior Art
May 11, 2005
WSJ's Patenting Guidelines
There was a decent article about patenting in the Wall Street Journal: A Step-By-Step Guide To Getting a Patent.
Posted by Patent Hawk at 12:53 AM | Prior Art
April 13, 2005
Prior Art Search Techniques
Searching for patent prior art, either for patentability, or in an invalidity search, can be abbreviated, and its quality assured, by applying skillful techniques.
Posted by Patent Hawk at 12:07 AM | Prior Art
March 14, 2005
Handling §103 Rejections
It’s not unusual to receive a 35 U.S.C. §103(a) combination rejection applied with little more than the glib dab of glue: "it would have been obvious". Examiners often implicitly rely upon art class as a binder for justifying combination. Convenient selective quotations are applied for features that wouldn’t mesh if looking at the art holistically. Application out of context is a similar flaw: applying a prior art feature used in a specific way to a claimed invention using a similar feature differently.