Posts Tagged: "patent claims"

Federal Circuit says Rule 36 Judgments can have Preclusive Effect

A Federal Circuit Rule 36 judgment can be a valid and final judgment for purposes of preclusive effects. Additionally, district court findings affirmed by a Rule 36 judgment can have preclusive effect as long as each is “necessary” to the final appellate judgment. The Federal Circuit did not address the Circuit split regarding the preclusive effect of independent, alternative holdings.

Federal Circuit affirms ruling that Apple does not infringe Core Wireless’ Patent

Core Wireless sued Apple for infringing its patent directed to a cellular network system including a mobile station providing for improved transmission of data packets. The jury found that Apple did not infringe Core Wireless’ patent. At issue on appeal is whether the district court misapplied the magistrate judge’s pretrial claim construction and whether the claim construction adopted by the district court when ruling on Core Wireless’ JMOL was erroneous… Ultimately, the Court concluded that the district court correctly denied Core Wireless’s motion for judgment as a matter of law and properly upheld the jury’s verdict of noninfringement.

If patent owner intends a special meaning, clear disavowal of ordinary meaning required

If the patent owner intends claim terms to have a special meaning, the patent must provide a clear disavowal of ordinary meaning or an alternative lexicography. Otherwise, the patent owner can expect to obtain the full scope of the term’s plain and ordinary meaning. Ordinary meaning also may yield to context, as where “sequence” may include “one bit,” not “at least two.” The Court also stresses that anticipation requires that a single reference “describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Ambiguous references do not anticipate a claim.

Federal Circuit limits breadth of claims based on definition in specification, prosecution history

On April 6, 2017, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in The Medicines Company v. Mylan, Inc. (2015-1113, 2015-1151, and 2015-1181) that imports certain subject matter from the specification into the claims… This case provides some key takeaways for patent practitioners, some more obvious than others. First, as has been known for some time, referring to the “invention” in a patent’s specification can hurt, as can indicating that a particular process “includes all” of the embodiments the specification describes. This is why patents for inventions in the U.S. now curiously, if understandably, usually avoid using the word “invention”. Also, setting forth definitions in a specification can have unintended consequences not just for the term being defined but also for terms that are not explicitly defined even if unequivocally characterized in some other way. Prosecution history also matters too, particularly where an applicant distinguishes its invention during prosecution by explicitly characterizing “the invention” in terms divorced from the language of the claims themselves.

Putting Words in the Mouth of McRO: The PTO Memorandum of November 2, 2016

The USPTO Memorandum of November 2, 2016 as to Recent Subject Matter Eligibility Decisions (“USPTO Memo”) inappropriately attributes the phrase “computer-related technology” to McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016). The phrase “computer-related technology” does not appear in McRO or even in Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014); rather, it appears in Enfish, LLC, v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016) and only after Enfish appropriately cites Alice.

In precedential decision, Federal Circuit further clarifies what constitutes a covered business method patent for CBM review

When applying that definition to the present case, the majority opinion rejected as too limiting Secure Axcess’s proposal that CBM review should be limited to “products and services such as credit, loans, real estate transactions, securities and investment products, and similar financial products and services”. However, the Federal Circuit also rejected the Board’s much more expansive approach that CBM review should apply to financial products or services that were merely “used in” and “incidental to” a financial activity… In dissent, Judge Lourie disagreed with the majority’s holding on the basis of Secure Axcess’s claims being “surely claims to ‘a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.’” This, he argued, was because “[t]here can be little doubt that such claims meet the ‘method or apparatus for performing data processing’ limitation of the statute.”

Federal Circuit Affirms Grant of Preliminary Injunction to Patent Owner

A preliminary injunction was appropriate when non-infringement depended on an erroneous claim construction; the evidence did not show the proposed combination of references for non-obviousness was enabled; irreparable harm was likely despite other competition, and the injunction tipped in favor of the public interest… The Court held that the fact that other infringers may be in the marketplace does not negate irreparable harm. It also held that the loss by Scag of customers may have far-reaching, long-term impact on its future revenues, and the sales lost by Scag are difficult to quantify due to “ecosystem effects,” where one company’s customers will continue to buy that company’s products and recommend them to others.

Requisites of a Patent Application: Claims and drawings technically not required on filing date

For as long as I can remember, in order for a nonprovisional utility patent application to be awarded the all important filing date you had to file a specification that adequately described the invention, at least one patent claim and at least one drawing if a drawing would facilitate in the understanding of the invention. Spec, claim, drawing was beaten…

Federal Circuit affirms PTAB decision to invalidate MPHJ patent

The Federal Circuit upheld the decision of the Patent Trial and Appeal Board (“Board”), on Inter Partes Review, to invalidate as anticipated or obvious all claims of a patent owned by MPHJ Technology Investments. MPHJ’s patent describes a system and method for scanning a physical document and “replicat[ing it] into other devices or applications or the internet,” for instance, by email.

Patent Strategy: Advanced Patent Claim Drafting for Inventors

Today we pick up our series with discussion of some advanced patent claim drafting strategies for inventors and others new to the art of claim drafting. Sometimes those who draft patent claims get a little too cute for their own good. What is it that you are trying to accomplish? Are you trying to get the broadest claim that you can possibly obtain? If that is your goal you will probably be rather disappointed with your efforts even if you are successful. Today it is very easy to challenge issued patent claims, indeed easier than ever before. That means your goal has to be to obtain the broadest valid claim possible, not just the broadest claim that you can sneak by a patent examiner.

Special Report: The Santa Transport Patent

The solution to this intractable puzzle was provided by Santa in the Patent, which describes a grid of enormous, land-based wind turbines running back and forth between the east and west coasts of the United States, arranged alternately parallel and perpendicular to the equator. This grid, claims the Patent, propels a sled that contains an assembly of wind-catching parachutes and, as a backup propulsion system, a team of stimulated ruminants who respond to their catchy Teutonic names. The sled itself is manned by a right jolly old elf who is prevented from being blown off by a sophisticated harnessing process adapted from the airline industry and more fully described in the Patent.

An Examiner’s Tips For Speedier Patent Prosecution

Interactions between patent examiners and patent practitioners are often tense. At worst, these interactions can be an exercise in restraint with both parties thinly veiling their disdain for one another. This adversarial approach can stall prosecution and run adverse to the practitioner’s purpose – i.e., to obtain the best patent claim scope possible for his or her client. Patent practitioners thus could benefit in many instances by having a better understanding of an examiner’s expectations and approaching prosecution with a mind toward working with the examiner instead of against the examiner. A conversation with an Examiner in a mechanical art unit provided the following tips for how practitioners may expedite the examination process by working (to the extent possible) within the examiner’s expectations.

Patent Drafting for Beginners: The anatomy of a patent claim

First, every patent claim needs a preamble, which is the introductory phrase in a claim… Second, every patent claim needs a transition. The most common transitions are: “comprising” and “consisting of” … Third, the first time you introduce a limitation you MUST introduce it with either “a” or “an”, as is grammatically appropriate… Below in an example of an independent claim that applies the above stated three simple rules, which is taken from U.S. Patent No. 6,009,555, titled Multiple component headgear system.

Comparing and Contrasting European 2-part claims with US Jepson claims

European practice requires a strict distribution of the features before and after “characterizing”, where those prior art features that are common with the definition of the invention must be included in the pre-characterizing part. A useful way of thinking about a 2-part claim is that, schematically, the pre-characterizing part, taken alone, is a claim that covers the invention but is so broad that it covers also the closest prior art. This broad definition is followed by a characterizing part that specifies the features that confer novelty to the entire claim. Thus, the pre-characterizing part is is not a definition of the prior art but is a non-novel definition of the invention.

EON Corp. petitions Supreme Court for review of Federal Circuit’s expansive view of Rule 50 power

In EON Corp. IP Holdings LLC v. Silver Spring Networks, Inc., No. 15-1237, 815 F.3d 1314 (Fed. Cir. 2016), the Federal Circuit reversed a jury verdict and ordered judgment as a matter of law (“JMOL”)—without further proceedings in the district court—on an unarticulated claim construction that was raised by neither party below or on appeal. Specifically, the case presents the issue: “Whether the Federal Circuit erred in ordering entry of judgment as a matter of law on a ground not presented in a Rule 50 motion in the district court, even though the ground presented a purely legal question.”