August 22, 2010
Crushed
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.
Posted by Patent Hawk at 1:15 PM | Prior Art | Comments (1)
August 20, 2010
Deep Rig
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 | Comments (0)
August 13, 2010
Inherent
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 | Comments (0)
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.
Continue reading "Lock on Obzilla"
Posted by Patent Hawk at 7:15 PM | Prior Art | Comments (14)
July 7, 2010
Dated
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.
Posted by Patent Hawk at 8:36 PM | Prior Art | Comments (8)
July 6, 2010
Garbage Bits
Telcordia
sued Cisco for infringing network data transfer patents
4,893,306;
4,835,763; and
RE36,633. '306 was knocked out by noninfringement in summary judgment. '763
and '633 ran the gauntlet through trial to a $6.5 million damages award. The
district judge then tacked on prejudgment interest, an accounting for interim
sales, and "ordered the parties to negotiate the terms of a royalty that would
apply to the accounting and to post-judgment sales." Telcordia appealed the '306
claim construction. Cisco cross-appealed '306 and '763 validity, as well as the
post-trial damages award and ongoing royalty negotiation dictate.
Continue reading "Garbage Bits"
Posted by Patent Hawk at 8:47 PM | Claim Construction | Comments (1)
June 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.
Continue reading "Opium for the Masses"
Posted by Patent Hawk at 5:12 PM | Prior Art | Comments (0)
June 9, 2010
Fractured
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.
Posted by Patent Hawk at 10:13 PM | Prior Art | Comments (5)
June 8, 2010
Lights Please
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.
Continue reading "Lights Please"
Posted by Patent Hawk at 10:05 PM | Prior Art | Comments (18)
May 28, 2010
Custom Casket
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.
Continue reading "Custom Casket"
Posted by Patent Hawk at 12:19 PM | Standing | Comments (0)
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."
Continue reading "Patent Slips on Non-Slip Surface"
Posted by Patent Hawk at 3:57 PM | Claim Construction | Comments (2)
May 19, 2010
Misguided Missile
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.
Continue reading "Misguided Missile"
Posted by Patent Hawk at 4:18 PM | Prior Art | Comments (39)
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.
Continue reading "Sales Assistant Killed"
Posted by Patent Hawk at 12:04 PM | Prior Art | Comments (1)
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.
Posted by Patent Hawk at 3:39 PM | Prior Art | Comments (3)
May 7, 2010
Swept Away
Rolls-Royce's
6,071,077 and United Technologies (UTC) reissue application 09/874,931 had a
head-on collision in the PTO that bounced into court under
35 U.S.C. § 146. The patents go to fan blades used in jet aircraft. The
lame-brained patent Board misconstrued claims (too broadly, naturally: "the
Board interpreted the claim to embrace both a forward and rearward sweep
angle"), and found an interference, ruling in favor of UTC. The district court
reversed that, holding "that the inventions were patentably distinct and there
was no interference-in-fact, resulting in a final judgment in favor of
Rolls-Royce." UTC appealed.
Posted by Patent Hawk at 10:11 AM | Prior Art | Comments (0)
April 14, 2010
Floored
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.
Posted by Patent Hawk at 9:57 AM | Prior Art | Comments (5)
April 4, 2010
Readily
Hearing Components
sued Shure over hearing aid patents
4,880,076;
5,002,151;
and
5,401,920,
technologies used in Shure's earphones. The district court outcome was invalidity by indefiniteness for
'920 asserted claims, and noninfringement for a few claims of '076 and '151 for Shure's product that used a straight nozzle. A jury found the '076 and '151
patents "not invalid and infringed by Shure's products both with a barb and with
a straight nozzle," and awarded $4.6 million in damages. Post-trial, the judge
granted a portion of Shure's noninfringement motion, but left the patents valid.
That went to appeal, as well as denying Shure noninfringement JMOL for its
barbed nozzle earphones, and denying laches. Hearing Components wanted another
hearing on the claim term "readily" turning its claims deaf to definiteness.
Posted by Patent Hawk at 12:39 PM | § 112 | Comments (0)
March 30, 2010
Regulated
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 | Comments (0)
March 5, 2010
Cool Analogy
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.
Continue reading "Cool Analogy"
Posted by Patent Hawk at 9:10 PM | Prior Art | Comments (6)
March 3, 2010
Momentos
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.
Posted by Patent Hawk at 2:44 PM | Prior Art | Comments (14)
February 25, 2010
Crock
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.
Posted by Patent Hawk at 11:24 PM | ITC | Comments (9)
February 24, 2010
Fragments
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."
Posted by Patent Hawk at 6:34 PM | Prior Art | Comments (1)
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."
Continue reading "Why the Hawk"
Posted by Patent Hawk at 12:52 PM | Prior Art | Comments (2)
February 8, 2010
Unpublished
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....
Continue reading "Unpublished"
Posted by Patent Hawk at 2:52 PM | Prior Art | Comments (1)
February 2, 2010
Inherent Anticipation
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."
Continue reading "Inherent Anticipation"
Posted by Patent Hawk at 2:48 AM | Prior Art | Comments (4)
January 29, 2010
Diabetic
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 | Comments (0)
December 22, 2009
Unpreserved
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.
Continue reading "Unpreserved"
Posted by Patent Hawk at 8:57 PM | Case Law | Comments (1)
December 17, 2009
No Transaction
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."
Continue reading "No Transaction"
Posted by Patent Hawk at 2:03 AM | Prior Art | Comments (2)
December 8, 2009
Actually Factual
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.
Continue reading "Actually Factual"
Posted by Patent Hawk at 5:26 PM | Infringement | Comments (1)
December 3, 2009
Imperfect Web
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.
Continue reading "Imperfect Web"
Posted by Patent Hawk at 8:04 PM | Prior Art | Comments (2)
November 19, 2009
Fatigued
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.
Posted by Patent Hawk at 10:30 PM | Prior Art | Comments (2)
September 23, 2009
Teed Off
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 | Comments (0)
September 4, 2009
Junk Examination
To
characterize USPTO examination quality over
the past 20 years as uneven would be a complimentary understatement. 'Good
enough for government work' would be more like it, with 'shoddy' pithily
on-point. In the 1990s the PTO granted reams of junk patents, creating a
political firestorm as the junk hit the litigation fan. In the past few
years, the reaction by a politicized patent office has been a sphincter of parsimony: not granting patents for deserved
inventions. Herein a case in point.
Continue reading "Junk Examination"
Posted by Patent Hawk at 5:32 PM | The Patent Office | Comments (105)
September 3, 2009
Healthy Assertion
Martek
and Lonza vend a health supplement made "by extracting lipids from fermented
microorganisms - specifically certain microalgae." Martek owns patents it
asserted against Lonza:
5,340,594;
5,698,244;
6,410,281; and
6,451,567. Some claims were found infringed in district court, and thereupon
the inevitable appeal. Lonza attacked priority date by way of parent enablement;
fought the finding of infringement via questionable testing; argued prior
invention with uncorroborated evidence; and tried to clobber the claim
construction using the file wrapper as a club. Meanwhile, Martek had its own
appeal query: what's an animal?
Continue reading "Healthy Assertion"
Posted by Patent Hawk at 7:25 PM | § 112 | Comments (5)
August 26, 2009
Compound
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.
Posted by Patent Hawk at 4:14 PM | Prior Art | Comments (5)
August 21, 2009
Ticker
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).
Posted by Patent Hawk at 11:56 PM | Case Law | Comments (5)
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.
Continue reading "In the Weeds"
Posted by Patent Hawk at 11:28 PM | Prior Art | Comments (2)
August 10, 2009
Flat Tire
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)
Posted by Patent Hawk at 9:46 PM | Prior Art | Comments (5)
August 6, 2009
Patent Contraceptive
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.
Continue reading "Patent Contraceptive"
Posted by Patent Hawk at 10:24 PM | Prior Art | Comments (36)
August 2, 2009
Sop
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.
Posted by Patent Hawk at 6:41 PM | Prior Art | Comments (34)
July 10, 2009
Beaned
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 | Comments (0)
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.
Continue reading "Paid As Used"
Posted by Patent Hawk at 1:23 PM | Prior Art | Comments (5)
June 13, 2009
Twang
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.
Posted by Patent Hawk at 10:20 AM | Prior Art | Comments (3)
June 9, 2009
Biocide
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.
Posted by Patent Hawk at 8:40 PM | Claim Construction | Comments (5)
June 1, 2009
Ensnarement
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.
Continue reading "Ensnarement"
Posted by Patent Hawk at 6:39 PM | Prior Art | Comments (0)
May 14, 2009
Unexpected
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 | Comments (0)
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.
Posted by Patent Hawk at 9:21 PM | Prior Art | Comments (2)
April 24, 2009
Toyed
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.
Posted by Patent Hawk at 4:38 PM | Prior Art | Comments (9)
April 3, 2009
Pointer
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?
Posted by Patent Hawk at 10:41 PM | Prior Art | Comments (12)
April 1, 2009
Gamed
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.
Posted by Patent Hawk at 8:44 PM | Prior Art | Comments (4)
March 31, 2009
Shadows
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 | Comments (0)
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.
Continue reading "Useless But Enabling"
Posted by Patent Hawk at 9:17 PM | Prior Art | Comments (0)
March 25, 2009
Leaky
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.
Posted by Patent Hawk at 5:27 PM | Prior Art | Comments (2)
March 12, 2009
Remedied
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)."
Posted by Patent Hawk at 4:00 PM | Prior Art | Comments (1)
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.
Continue reading "Up in Smoke"
Posted by Patent Hawk at 3:52 PM | Prior Art | Comments (1)
February 19, 2009
First to Fail
The
great anachronism of the U.S. patent system arises with interferences, a natural
outgrowth of making priority a mystery by having a first-to-invent regime,
rather than the tidier first-to-file, adopted worldwide, everywhere but this
backwater too proudly called "the good ole US of A." Herein, a priority date squabble over collapsible pet carriers
that aren't patentable anyway, as KSR kicks them out of the doghouse and
buries them in the graveyard.
Continue reading "First to Fail"
Posted by Patent Hawk at 5:14 PM | Prosecution | Comments (0)
February 13, 2009
Wardrobe Malfunction
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.
Continue reading "Wardrobe Malfunction"
Posted by Patent Hawk at 2:50 PM | Prior Art | Comments (8)
February 12, 2009
Inscrutable Inconsistency
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.
Continue reading "Inscrutable Inconsistency"
Posted by Patent Hawk at 10:05 PM | § 101 | Comments (7)
February 9, 2009
Blown Candle
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."
Continue reading "Blown Candle"
Posted by Patent Hawk at 4:55 PM | Prior Art | Comments (7)
January 30, 2009
Contained
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.
Posted by Patent Hawk at 11:17 AM | Prior Art | Comments (2)
January 26, 2009
Article Two
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."
Continue reading "Article Two"
Posted by Mr. Platinum at 12:47 PM | Prior Art | Comments (0)
Searching
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 | Comments (0)
January 21, 2009
Strong Showing
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.
Continue reading "Strong Showing"
Posted by Patent Hawk at 8:28 PM | Prior Art | Comments (1)
January 15, 2009
Stented
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.
Posted by Patent Hawk at 6:34 PM | Prior Art | Comments (15)
January 9, 2009
Obviously Flowing
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.
Continue reading "Obviously Flowing"
Posted by Patent Hawk at 3:10 PM | Prior Art | Comments (38)
December 26, 2008
Mundane
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."
Posted by Patent Hawk at 11:01 PM | Litigation | Comments (3)
December 21, 2008
Sour Grapes
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.
Continue reading "Sour Grapes"
Posted by Patent Hawk at 2:28 PM | Prior Art | Comments (1)
December 20, 2008
Pole Position
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.
Continue reading "Pole Position"
Posted by Patent Hawk at 2:47 PM | Prior Art | Comments (15)
December 12, 2008
Unpredictable
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.
Continue reading "Unpredictable"
Posted by Patent Hawk at 11:44 AM | Prior Art | Comments (0)
November 23, 2008
Insect Screen
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.
Continue reading "Insect Screen"
Posted by Patent Hawk at 1:53 AM | Prior Art | Comments (0)
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.
Continue reading "Bad Brew on Good Chemistry"
Posted by Patent Hawk at 6:40 PM | Prosecution | Comments (0)
October 22, 2008
Preliminary Jam
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.
Continue reading "Preliminary Jam"
Posted by Patent Hawk at 12:10 AM | Prior Art | Comments (0)
October 20, 2008
Means Streets
Net
MoneyIN asserted
5,822,737 &
5,963,917, which go to "systems for processing credit card transactions over
the Internet," against Verisign and other online credit card vendors. The
claims, in the form of means-plus-function, were invalidated because they lacked
specification support. The road to that invalidity is § 112 ¶ 2, indefiniteness, not
§ 112 ¶ 1, the written description requirement. Patents by Mark Ogram, inventor
and patent attorney, turn Shakesperean: "hoist
with his own petar." At least he only has himself to blame. Also herein, the arrangement requirement for anticipation.
Continue reading "Means Streets"
Posted by Patent Hawk at 11:55 PM | § 112 | Comments (5)
October 14, 2008
Down Boy
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 | Comments (0)
October 11, 2008
Effective Filing Date
Technology
Licensing (TLC) went after Gennum for infringing a family of patents going to
video synchronization. The most interesting facet of this case pivoted on patent
priority date. With a continuation-in-part (CIP), a claim is entitled
to the effective filing date of an application that provides written description
support for the claim. The effective filing date becomes an issue when
invalidating prior art exists between the initial parent filing date and the
filing date of a later CIP. Plus, other songs in this dance
hall: "Beast of Burdens of Proof," "Cutting a Bitch on Rule 56," and "Reaching to Delve
With a Thin 112."
Continue reading "Effective Filing Date"
Posted by Patent Hawk at 9:37 PM | Prior Art | Comments (0)
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.
Continue reading "Fact Into Fiction"
Posted by Patent Hawk at 12:37 AM | Prior Art | Comments (0)
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.
Continue reading "Anticipation Without Obviousness"
Posted by Patent Hawk at 10:43 PM | Prior Art | Comments (5)
October 3, 2008
Enabling
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 | Comments (0)
September 19, 2008
Buffaloed
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 | Comments (0)
September 18, 2008
Packaged
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 | Comments (0)
September 15, 2008
Peer-to-Pissant
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.
Continue reading "Peer-to-Pissant"
Posted by Patent Hawk at 3:14 PM | Prior Art | Comments (14)
August 28, 2008
Heated Argument
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.
Continue reading "Heated Argument"
Posted by Patent Hawk at 2:41 PM | Claim Construction | Comments (0)
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.
Continue reading "Pennies Saved, Patent Lost"
Posted by Patent Hawk at 12:49 PM | Prior Art | Comments (0)
August 21, 2008
Incurable
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 | Comments (0)
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.
Continue reading "Dead Cash Cow Still Milks"
Posted by Patent Hawk at 6:58 PM | Prior Art | Comments (0)
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.
Continue reading "Dealing with KSR Chat"
Posted by Patent Hawk at 10:43 AM | Prior Art | Comments (1)
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.
Continue reading "In the Aorta"
Posted by Patent Hawk at 11:16 AM | Injunction | Comments (0)
August 14, 2008
Obzilla Refined
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.
Continue reading "Obzilla Refined"
Posted by Patent Hawk at 11:57 AM | Prior Art | Comments (8)
August 3, 2008
Hypocrite Nation
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).
Posted by Patent Hawk at 12:02 PM | Prior Art | Comments (18)
July 21, 2008
Tummy Ache
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.
Posted by Patent Hawk at 2:07 PM | Prior Art | Comments (1)
July 14, 2008
Unsold
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 | Comments (0)
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?
Continue reading "Not Invented Here"
Posted by Patent Hawk at 2:25 PM | Prior Art | Comments (6)
June 19, 2008
Balled Out
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.
Posted by Patent Hawk at 11:19 PM | Inequitable Conduct | Comments (1)
June 14, 2008
Obzilla Revisited
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.
Continue reading "Obzilla Revisited"
Posted by Patent Hawk at 7:24 PM | Prior Art | Comments (0)
June 1, 2008
Marked
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.
Posted by Patent Hawk at 1:32 AM | Prior Art | Comments (4)
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.
Continue reading "Finite Genus Killer"
Posted by Patent Hawk at 9:03 PM | Prior Art | Comments (3)
April 20, 2008
Beaming Down
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.
Continue reading "Beaming Down"
Posted by Patent Hawk at 12:31 AM | Prior Art | Comments (0)
April 17, 2008
Hospital TV
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."
Continue reading "Hospital TV"
Posted by Patent Hawk at 2:49 AM | Prior Art | Comments (0)
April 4, 2008
Presumed Valid
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).
Continue reading "Presumed Valid"
Posted by Patent Hawk at 1:11 PM | Prior Art | Comments (2)
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 | Comments (0)
March 28, 2008
Rats
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.
Posted by Patent Hawk at 4:13 PM | Prior Art | Comments (2)
Sound Invention
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."
Continue reading "Sound Invention"
Posted by Patent Hawk at 12:54 AM | Prior Art | Comments (1)
March 23, 2008
Amateur Hour
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.
Continue reading "Amateur Hour"
Posted by Patent Hawk at 1:50 AM | The Patent Office | Comments (0)
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.
Continue reading "CIP Not A Divisional"
Posted by Patent Hawk at 2:56 PM | Prior Art | Comments (0)
March 5, 2008
Contra-Validity
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.
Continue reading "Contra-Validity"
Posted by Patent Hawk at 5:54 PM | Prior Art | Comments (0)
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.
Continue reading "On-Sale Bar Ruffle"
Posted by Patent Hawk at 1:05 PM | Prior Art | Comments (0)
January 30, 2008
Restraint
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 | Comments (0)
January 22, 2008
Swan Song
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.
Posted by Patent Hawk at 12:39 PM | Prior Art | Comments (2)
January 11, 2008
Patent Pal
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 | Comments (0)
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.
Continue reading "Not So Obvious"
Posted by Patent Hawk at 1:40 AM | Prior Art | Comments (22)
January 8, 2008
Self-Enabled Destruction
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.
Continue reading "Self-Enabled Destruction"
Posted by Patent Hawk at 1:13 PM | Prior Art | Comments (9)
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.
Continue reading "Citing Prior Art"
Posted by Patent Hawk at 12:21 AM | Prosecution | Comments (2)
October 23, 2007
Invention Undermined
Bryan
Zerhusen of McCarter &
English opines that
KSR
& the
new USPTO obviousness examination Guidelines ring a death knell
for many constitutionally patentable inventions:
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.
Continue reading "Invention Undermined"
Posted by Patent Hawk at 9:33 PM | Prior Art | Comments (8)
October 21, 2007
Domino
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.
Posted by Patent Hawk at 12:32 PM | Prior Art | Comments (2)
October 13, 2007
Obvious Discrepancy
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.
Continue reading "Obvious Discrepancy"
Posted by Patent Hawk at 10:27 PM | Prior Art | Comments (3)
October 10, 2007
The Obvious Guide
The
USPTO
published its examination guidelines for determining obviousness in light of
the SCOTUS KSR v. Teleflex ruling.
From the patent office announcement:
“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.”
Continue reading "The Obvious Guide"
Posted by Patent Hawk at 12:33 PM | Prior Art | Comments (5)
September 27, 2007
Fiction Writers
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."
Continue reading "Fiction Writers"
Posted by Patent Hawk at 1:03 PM | Prosecution | Comments (4)
September 19, 2007
Unappreciated
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.
Continue reading "Unappreciated"
Posted by Patent Hawk at 10:54 AM | Prior Art | Comments (1)
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.
Continue reading "Death Certificate Reissue"
Posted by Patent Hawk at 11:30 AM | Case Law | Comments (0)
September 11, 2007
Obvious Viper
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.
Continue reading "Obvious Viper"
Posted by Patent Hawk at 2:31 PM | Prior Art | Comments (5)
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.
Continue reading "USTPO Obviousness Guidelines"
Posted by Patent Hawk at 10:32 PM | Prosecution | Comments (2)
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
Continue reading "Whichever Way It Folds and Holds"
Posted by Patent Hawk at 6:05 PM | Prior Art | Comments (0)
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.
Continue reading "The KSR Trend"
Posted by Patent Hawk at 1:26 AM | Litigation | Comments (0)
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.
Continue reading "Dealing with KSR"
Posted by Patent Hawk at 12:39 PM | Prosecution | Comments (0)
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.
Continue reading "Chilling Invention at the PTO"
Posted by Patent Hawk at 10:45 PM | Prosecution | Comments (1)
July 11, 2007
Earshot
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 | Comments (0)
July 9, 2007
Obviousness Vampire
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.
Continue reading "Obviousness Vampire"
Posted by Patent Hawk at 7:35 PM | Prior Art | Comments (0)
June 25, 2007
Patent Coolies
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.
Continue reading "Patent Coolies"
Posted by Patent Hawk at 12:43 AM | Prior Art | Comments (0)
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.
Continue reading "Up the Sleeve"
Posted by Patent Hawk at 12:15 AM | Prior Art | Comments (0)
June 15, 2007
Problem Solved
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.
Continue reading "Problem Solved"
Posted by Patent Hawk at 10:17 AM | Prosecution | Comments (4)
Chemical Obviousness
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."
Continue reading "Chemical Obviousness"
Posted by Patent Hawk at 12:18 AM | Prior Art | Comments (0)
May 30, 2007
Uncle Sam Wants You... To Examine Patent Claims
In
IP Law 360,
Mark Hogge at
Greenberg Traurig pans public patent prior art
panning: "Processing and issuing patents is a business enterprise for the
government."
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.)
Continue reading "Uncle Sam Wants You... To Examine Patent Claims"
Posted by Patent Hawk at 12:15 AM | Prior Art | Comments (0)
May 29, 2007
KSR Playing
Hal
Wegner turns his keen mind to the SCOTUS KSR decision in the large, its
potential impact at the USPTO, and factors for prosecutors to consider. Herein, excerpts from
a crucial paper.
Continue reading "KSR Playing"
Posted by Patent Hawk at 3:40 PM | Prior Art | Comments (0)
Motionless Litigation
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).
Continue reading "Motionless Litigation"
Posted by Patent Hawk at 3:10 PM | Prior Art | Comments (0)
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.
Continue reading "Upside Down Down Under"
Posted by Patent Hawk at 12:32 AM | International | Comments (1)
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.
Continue reading "Non- En Banc Cacophany"
Posted by Patent Hawk at 1:31 PM | Prior Art | Comments (0)
Incremental Invention
"True
creativity is characterized by a succession of acts, each dependent on the one
before and suggesting the one after." - Edwin Land, Polaroid Founder
Continue reading "Incremental Invention"
Posted by Patent Hawk at 12:33 PM | Prior Art | Comments (0)
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.
Continue reading "The Dynamics of Obviousness"
Posted by Patent Hawk at 10:30 PM | The Patent System | Comments (0)
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.
Continue reading "Ordinary Skill in the Art"
Posted by Patent Hawk at 2:50 PM | Prior Art | Comments (1)
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."
Continue reading "Common Sense Turns Wily"
Posted by Patent Hawk at 11:00 AM | Prior Art | Comments (0)
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.
Continue reading "USPTO KSR Memo"
Posted by Patent Hawk at 5:55 PM | Prosecution | Comments (0)
April 30, 2007
Obzilla
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.
Posted by Patent Hawk at 2:16 PM | Prior Art | Comments (0)
April 23, 2007
Bloated Anticipation
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."
Continue reading "Bloated Anticipation"
Posted by Patent Hawk at 8:48 PM | Prior Art | Comments (2)
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.
Continue reading "Hot Air, No Gas"
Posted by Patent Hawk at 11:47 AM | Prior Art | Comments (0)
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).
Continue reading "Uncertainty is Not Obvious"
Posted by Patent Hawk at 12:00 AM | Prior Art | Comments (0)
March 28, 2007
Toxic Review
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.
Continue reading "Toxic Review"
Posted by Patent Hawk at 8:35 PM | Prior Art | Comments (0)
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.
Continue reading "The Salt of Obviousness"
Posted by Patent Hawk at 10:00 PM | Prior Art | Comments (0)
March 22, 2007
Pressure Drop
Liebel asserted four patents against Medrad. In the second appeal of the
litigation, the appeals court (CAFC
06-1156) concurs with a
district court ruling that Liebel had not enabled broadened claims in two of the
four patents, thus invalidating the patents under
35 U.S.C. § 112, ¶ 1.
Liebel had broadened its claims to ensnare Medrad, and so tripped itself up over
its own greed. The full scope of claims must be enabled. As the CAFC tooted:
"The motto, “beware of what one asks for,” might be applicable here." Concurring
again with the district court, the other two asserted patents were found invalid
by prior art; cited prior art; in summary judgment, with no factual dispute.
Continue reading "Pressure Drop"
Posted by Patent Hawk at 10:29 PM | § 112 | Comments (0)
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.
Continue reading "Copyright Infringement Safe From Patent Infringement"
Posted by Patent Hawk at 12:01 AM | Prior Art | Comments (0)
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.
Continue reading "Ready for Patenting?"
Posted by Patent Hawk at 4:42 PM | Prior Art | Comments (0)
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.
Continue reading "The Cup Not Runneth Over"
Posted by Patent Hawk at 11:23 AM | Claim Construction | Comments (0)
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.
Continue reading "Intent to Deceive"
Posted by Patent Hawk at 1:04 PM | Inequitable Conduct | Comments (0)
February 12, 2007
Patent Monkey
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".
Continue reading "Patent Monkey"
Posted by Patent Hawk at 12:17 AM | Prior Art | Comments (1)
February 9, 2007
Deep Freeze
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)
Continue reading "Deep Freeze"
Posted by Patent Hawk at 3:14 PM | Claim Construction | Comments (0)
January 30, 2007
Wrong Temperature
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).
Continue reading "Wrong Temperature"
Posted by Patent Hawk at 2:07 PM | Prior Art | Comments (0)
December 26, 2006
Generic Anticipation
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).
Continue reading "Generic Anticipation"
Posted by Patent Hawk at 8:03 PM | Prior Art | Comments (0)
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.
Continue reading "On-Sale Bar Kiosk"
Posted by Patent Hawk at 11:59 AM | Prior Art | Comments (0)
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.
Continue reading "Patent Search Engines"
Posted by Patent Hawk at 10:29 AM | Prior Art | Comments (1)
December 9, 2006
Wireless
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 | Comments (0)
November 29, 2006
Implicit Pressure
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.
Continue reading "Implicit Pressure"
Posted by Patent Hawk at 6:44 PM | Prior Art | Comments (0)
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.
Continue reading "Supreme Court Obviousness Motivation"
Posted by Patent Hawk at 4:31 PM | Prior Art | Comments (0)
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.
Continue reading "Anticipation Needn't Be Effective"
Posted by Patent Hawk at 8:13 PM | Prior Art | Comments (0)
November 16, 2006
Death Rays
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 | Comments (0)
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.
Continue reading "Apparatus versus Process Use"
Posted by Patent Hawk at 12:22 PM | Prior Art | Comments (0)
November 8, 2006
Dumb Luck
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 | Comments (0)
October 27, 2006
Pissed Away
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]
Continue reading "Pissed Away"
Posted by Patent Hawk at 11:35 AM | Prior Art | Comments (0)
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.
Continue reading "20/20 Take 2"
Posted by Patent Hawk at 8:18 AM | Prior Art | Comments (0)
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...
Continue reading "On the Path to Obviousness"
Posted by Patent Hawk at 10:36 AM | Prior Art | Comments (0)
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).
Continue reading "Dyeing the Prior Art"
Posted by Patent Hawk at 12:03 AM | Prior Art | Comments (0)
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.
Continue reading "Publish, Then Discover"
Posted by Patent Hawk at 12:10 AM | Prior Art | Comments (0)
September 19, 2006
Anti-Patent Troll
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.
Continue reading "Anti-Patent Troll"
Posted by Patent Hawk at 2:13 PM | Prior Art | Comments (0)
September 12, 2006
Expert Disclosure
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.
Continue reading "Expert Disclosure"
Posted by Patent Hawk at 4:38 PM | Prior Art | Comments (0)
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?
Continue reading "Supreme Court On Open Source Software"
Posted by Patent Hawk at 12:01 AM | Prior Art | Comments (0)
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).
Continue reading "Implicitly & Expertly Obvious"
Posted by Patent Hawk at 12:48 PM | Prior Art | Comments (3)
September 2, 2006
Wiki Patents
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.
Continue reading "Wiki Patents"
Posted by Patent Hawk at 3:50 PM | Prior Art | Comments (0)
August 30, 2006
Obviousness Aligned
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).
Continue reading "Obviousness Aligned"
Posted by Patent Hawk at 12:00 PM | Prior Art | Comments (0)
August 29, 2006
Impermissible Hindsight
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.
Continue reading "Impermissible Hindsight"
Posted by Patent Hawk at 1:42 PM | Prior Art | Comments (0)
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.
Continue reading "Backyard Prior Art"
Posted by Patent Hawk at 12:58 PM | Prior Art | Comments (1)
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.
Continue reading "Becoming Less Obvious"
Posted by Patent Hawk at 7:44 PM | Prior Art | Comments (4)
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]
Continue reading "Game Call Totality"
Posted by Patent Hawk at 12:56 PM | Litigation | Comments (0)
May 30, 2006
Obviousness
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.
Continue reading "Obviousness"
Posted by Patent Hawk at 9:07 PM | Prior Art | Comments (2)
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.
Continue reading "Up the Creek"
Posted by Patent Hawk at 2:24 PM | Litigation | Comments (0)
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.
Continue reading "Accessible Prior Art"
Posted by Patent Hawk at 11:35 AM | Prior Art | Comments (0)
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.
Continue reading "Working Prior Art"
Posted by Patent Hawk at 3:44 PM | Prior Art | Comments (0)
March 22, 2006
Obviousness
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.
Continue reading "Obviousness"
Posted by Patent Hawk at 12:01 PM | Prior Art | Comments (0)
February 3, 2006
Spanish Inquisition
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.
Continue reading "Spanish Inquisition"
Posted by Patent Hawk at 12:19 PM | Prior Art | Comments (0)
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.
Continue reading "The Cure for Junk Patents: Old Hat"
Posted by Patent Hawk at 12:03 AM | Prior Art | Comments (0)
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?
Continue reading "Veracity Requires Documentation"
Posted by Patent Hawk at 10:46 AM | Prior Art | Comments (0)
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.
Continue reading "Secret & Exploited"
Posted by Patent Hawk at 12:02 AM | Prior Art | Comments (0)
August 16, 2005
Prior-Art-O-Matic
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 | Comments (0)
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".
Continue reading "On-Sale Bar Fine-Tuned"
Posted by Patent Hawk at 4:01 PM | Prior Art | Comments (0)
July 27, 2005
Wayback
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 | Comments (0)
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).
Continue reading "Mettling With Obviousness In Metal"
Posted by Patent Hawk at 1:49 PM | Prior Art | Comments (0)
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.
Continue reading "WSJ's Patenting Guidelines"
Posted by Patent Hawk at 12:53 AM | Prior Art | Comments (0)
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.
Continue reading "Prior Art Search Techniques"
Posted by Patent Hawk at 12:07 AM | Prior Art | Comments (0)
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.
Continue reading "Handling §103 Rejections"
Posted by Patent Hawk at 12:58 PM | Prior Art | Comments (1)
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