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Posts Tagged: "indefinite"

Federal Circuit Says PTAB Erred by Accepting Stipulation of Parties

According to Judge Taranto, when the issue of indefiniteness of claims is raised in an IPR the challenge is not merely a contest between the petitioner and the patent owner, but rather protects the interests of the judicial system, the agency, and the public. Therefore, the Board should have conducted a prior-art analysis without any consideration of or deference to the stipulation of the parties, and entry of a final written decision on the merits absent such an independent consideration was inappropriate. The Board should have determined if there is indefiniteness and if “such indefiniteness renders it impossible to adjudicate the prior-art challenge on its merits, then the Board should conclude that it is impossible to reach a decision on the merits of the challenge and so state in its decision.”

USPTO Withdrawals Support for Telebrands at CAFC, Actively Considering PTAB Practice

Director Iancu is known to be engaging in something that might be called a listening tour, speaking with various interested parties and groups as he attempts to formulate his own strategies and anticipated rulemaking efforts. It is widely expected by insiders that Iancu will bring change to PTAB proceedings in an effort to realize a more balanced procedure; perhaps even sweeping change. That the USPTO is now openly announcing that they are actively reconsidering the PTAB’s approach to claim construction and indefiniteness should be welcome news to all inventors.

$48 Million Willful Infringement Award Vacated by Federal Circuit

Exmark Manufacturing was awarded $24 million in compensatory damages after a jury found that Briggs and Stratton infringed Exmark’s patent on a lawn mower with improved flow control baffles. The award was doubled by the court, after a finding that Briggs and Stratton’s infringement was willful. On appeal, Briggs challenged six holdings: (1) summary judgment that claim 1 was not anticipated or obvious; (2) denial of summary judgment that claim 1 is indefinite; (3) denial of a new trial on damages; (4) evidentiary rulings related to damages; (5) denial of a new trial on willfulness; and, (6) denial of Brigg’s laches defense. The Federal Circuit vacated findings of willfulness and the underlying damages award, remanding to the trial court.

An Interesting Year on the Horizon: What to Watch in 2018

The issues I will be watching in 2018 other than Oil States are as follows: (1) What does the new Director of the USPTO do with respect to reforming the PTAB? (2) Will the USPTO adopt a code of judicial ethics for PTAB judges? (3) Will the U.S. drop out of the top 10 countries for patent protection in the annual U.S. Chamber IP Index? (4) How will the Federal Circuit resolve Eleventh Amendment sovereign immunity and the assertion of sovereign immunity by Indian Tribes? (5) Will the Federal Circuit continue its unprecedented disposition of cases without an opinion by relying on Rule 36 summary affirmance? (6) Will Conservative groups become even more vocal advocates of a strong patent system?

Federal Circuit Clarifies Standard for Indefiniteness of Mixed Subject Matter Claims

Because it is clear when infringement occurs, and the scope of the claims is reasonably certain, the Court reversed the judgment of invalidity due to indefiniteness… Claims having functional elements are not indefinite, as encompassing both an apparatus and a method, if they make clear whether infringement occurs upon creating the apparatus or upon its use. A claim with functional language clearly tied to a structure that defines its capabilities is an apparatus claim; such functional language does not make the claim indefinite by also claiming a method of use.

USPTO files brief at CAFC supporting patent-infringing respondent Telebrands

Tinnus argues in its appeal that the PTAB panel applied standards for inter partes review (IPR) proceedings to a trial that was instituted as a PGR. “In its institution decision, the Board incorrectly applied the lower ‘reasonable likelihood’ standard used for IPRs, rather than the higher ‘more likely than not’ standard governing PGRs,” Tinnus’ appeal reads, adding that the PTAB panel didn’t recognize this error in its final written decision.

USPTO, PTAB refuse to follow Supreme Court Nautilus decision

The PTAB is openly refusing to follow the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., it has found a term previously determined definite by the Federal Circuit to be indefinite, and the Solicitor’s Office is siding with an infringer with a reputation as a knock-off artist over an independent inventor… But why doesn’t the USPTO follow Nautilus? Because the Patent Office feels that since they apply the broadest reasonable interpretation to claims that means that the indefiniteness standard set forth by the Supreme Court in Nautilus does not apply to the Office. Breathtaking!

Mentor Graphics v. Synopsys: Affirmed-in-Part, Reversed-in-Part, Vacated-in-Part, and Remanded

Various Synopsys parties and EVE-USA, Inc. (collectively “Synopsys”) sued Mentor Graphics, seeking a declaration that Mentor’s ’376, ’531, and ’176 patents were invalid and not infringed. Mentor counterclaimed for willful infringement of those three patents, and also asserted infringement of two more (the ’526 and ’109 patents). The court consolidated the case with another involving a fourth patent owned by Mentor (the ’882 patent)… A jury does not have to further apportion lost profits to patented features of a larger product after applying the Panduit factors, which implicitly incorporate apportionment into the lost profit award. Claim preclusion applies when a claim was asserted, or could have been asserted, in a prior action. It does not bar allegations that did not exist at the time of the earlier action.

CAFC Reverses on Indefiniteness Because Claim Terms Sufficiently Supported by Examples

The Court was careful to explain that its “holding in this case does not mean that the existence of examples in the written description will always render a claim definite, or that listing requirements always provide sufficient certainty.” Instead, its holding is simply that “visually negligible” is sufficiently supported by Sonix’s patent “to inform with reasonable certainty those skilled in the art of the scope of the invention.” Practitioners prosecuting applications in which arguably subjective terms exist should include as much guidance as possible in the specification to define that term. It may prove vital to include requirements or examples.

Proper §112 Indefiniteness Analysis is Directed to the Claims Themselves, Not the Terms

The Federal Circuit Court found that the source of the purported indefiniteness (“processing system”) played no role in defining the claims. Since the asserted claims are method claims, patentability resides with the method steps and not with the machines performing those steps.

CAFC: Software means plus function claims Indefinite for failure to disclose algorithm

The Court also affirmed that the this means-plus-function term was indefinite. In the case of computer-implemented functions, the specification must disclose an algorithm for performing the claimed function. The patents-in-suit did not disclose an operative algorithm for the claimed “symbol generator.” A patentee cannot claim a means for performing a specific function and then disclose a “general purpose computer” as the structure performing that function. The specification must disclose an algorithm in hardware or software for performing the stated function.

Federal Circuit affirms district court’s summary judgment of non-infringement

Akzo appealed from the decision of the district court (Chief Judge Leonard Stark) to grant summary judgment to Dow, which found that Dow did not infringe the claims of U.S. Patent 6,767,956, either literally or under the doctrine of equivalents. Dow also cross-appealed from the district court’s conclusion that the claims of the ’956 patent were not indefinite. Ultimately, the Federal Circuit affirmed the district court on both appeals.

Court Reverses Indefiniteness Under Nautilus; Design Patents for Surgical Shears are Valid

Ethicon sued Covidien in the Ohio district court for infringement of utility and design patents directed to ultrasonic surgical shear devices. The court granted Covidien’s motions for summary judgment, concluding that one patent was invalid as indefinite, that another patent was not infringed by Covidien’s products, and that several design patents were invalid as functional and were not infringed. Ethicon appealed the judgment to the Federal Circuit. The Federal Circuit reversed on indefiniteness, reversed the district court’s determination that Ethicon’s design patents were invalid as primarily functional, and vacated the summary judgment of non-infringement for a surgical shears patent.

A Software Patent History: The Algorithm Cases

These cases are very important though because they give us the best glimpse yet into understanding the disclosure requirements for software patents that utilize means-plus-function claim language. Understanding this particular aspect of patent drafting may be crucial moving forward given that some believe that means-plus-function claiming may be one way to get at least some patent claim coverage in the wake of Alice. Therefore, given that the extraordinarily strict disclosure requirements mandated by employing means-plus-function claiming, this technique may well be the future for software patents. Certainly adhering to the extreme disclosure requirements in the Algorithm cases will be a best practice moving forward even if you do not employ means-plus-function claiming, and it will likely remain a best practice until some statutory or common law relief from Alice is achieved.

The Disclosure Revolution – A Report from the Front, 2014

The Disclosure Revolution is an ongoing process that has transformed patent law over the last couple of decades. While courts continue to say, “The claims define the invention,” decision after decision rewrites broad claim terms to conform to the scope of disclosure. A single embodiment once served as an example supporting enabled claims bounded only by the prior art; now, a single embodiment signals the inventor’s intend to limit the invention to the embodiment itself, rather than to claim terms… Overall, 2014 will likely be remembered primarily for Alice and its eventual progeny. In addition to its impact on the law per se, the economic effects may prove enormous. An entire segment of the patent community stands vulnerable to a slowdown, or shutdown, of patenting activity in the business methods and software fields. Other areas, including definiteness, will feel the effects of 2014, but in a far more incremental fashion.