Posts Tagged: "prior art"

In Praxair Distribution v. Mallinckrodt Hospital Products, Praxair petitioned for inter partes review of claims 1-19 of the ’112 patent, which the Board instituted. The Board held that claims 1-8 and 10-19 would have been obvious over four prior art references. However, claim 9 survived. Praxair appealed from the Board’s decision regarding claim 9, and Mallinckrodt cross-appealed regarding claims 1-8 and 10-11. The Federal Circuit affirmed the Board’s decision holding claims 1-8 and 10 unpatentable as obvious. Judge Newman concurred in judgment of unpatentability of claims 1-11, but disagreed with the Court’s view of the “printed matter doctrine” and its application to “information” and “mental steps.”

The Federal Circuit recently affirmed a decision of the United States Patent and Trademark Office to reject VerHoef’s pending application 13/328,201 for a dog harness under pre-AIA Section 102(f) because the applicant “did not himself invent the subject matter sought to be patented.” At the Federal Circuit, VerHoef conceded that the figure “8” loop was an essential feature, and did not dispute that the veterinarian, and not he, contributed the idea of the figure eight loop.

The Board is not compelled by Federal Circuit precedent or PTO guidelines to consider arguments and evidence presented for the first time during oral argument. However, if the Board does consider new arguments or evidence, the responding party must be given an opportunity to submit rebuttal arguments and evidence.

To request cancellation of one or more claims of a patent in an inter partes review (IPR), a petitioner must challenge the claim on the basis that the claim is unpatentable under 35 U.S.C §102 or 103, in view of prior art patents or printed publications. 35 U.S.C. § 311(b). Two ways a patent owner can disqualify references relied upon by the petitioner for unpatentability are by (i) asserting that the petitioner did not set forth sufficient evidence showing that the reference qualifies as a printed publication, or (ii) antedating the reference to show that the date of invention is prior to the critical date of the reference.

The Federal Circuit also remanded to the Board further consideration of the undisputed evidence presented by Polaris that its ATVs were a commercial success. Polaris presented undisputed evidence that its vehicles had generated over $1.5 billion in sales since 2007 and that the commercial product was tied to the patent and claims entitling Polaris to a presumption of a nexus. Despite this undisputed evidence the Board still concluded that Polaris failed to prove a nexus, finding Polaris’ evidence conclusory.

The recent Federal Circuit decision in Elbit Systems of America, LLC v. Thales Visionix, Inc. affirmed a final written decision issued by the Patent Trial and Appeal Board (PTAB), which upheld some claims in an inter partes review (IPR) proceeding challenging the validity of Thales’ U.S. Patent No. 6474159, titled Motion-Tracking and issued in November 2002. The patent claims a system for tracking the motion of an object relative to a moving reference frame using a first inertial sensor mounted on the tracked object, a second inertial sensor mounted on the moving reference frame and an element that receives signals from both inertial sensors to determine an orientation of the object relative to the moving reference frame. The resulting invention enables the use of inertial head-tracking systems for platforms including flight simulators and other vehicular applications.

So what is an admission? A statement made during patent prosecution identifying the work of another as prior art is called an admission. Admissions can and will be relied upon by patent examiners for both novelty (35 U.S.C. 102) and obviousness (35 U.S.C. 103) determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the express terms of the statute. Admissions should be avoided at all costs, regardless of how innocent they seem to be. This is a lesson that all new patent practitioners and inventors need to take to heart. No matter how innocuous the statement may seem, always remember that no good deed will go unpunished! Everything you do say can and will be used against your patent once it issues — forever.

While the Court affirmed several of the Board’s validity findings, it reversed the determination that the ’455 PCT qualifies as prior art. At issue was the extent to which the ‘817 application included the disclosures of Severinsky, so that challenged claims would antedate the ‘455 PCT. Paice argued that Severinsky was incorporated into the ‘817 application and was not prior art. Therefore, certain challenged claims could rely on Severinsky for the ‘817 priority date, which was earlier than the ’455 PCT.

On Tuesday, January 23rd, the Court of Appeals for the Federal Circuit issued a ruling in Google LLC v. Network-1 Technologies, Inc. which affirmed a finding by the Patent Trial and Appeal Board (PTAB) that a patent covering a method of identifying media linked over the Internet was valid. The Federal Circuit disagreed with Google that the PTAB erred in its claim construction during the validity trial, leaving in place a patent that has been asserted by Network-1 against Google’s major online media platform YouTube.

While the recent decision did uphold the PTAB’s finding of validity of some claims, the Federal Circuit reversed and remanded part of the decision in a way that further highlights the revolving door of validity challenges taking place between the Federal Circuit and the PTAB… The recent Federal Circuit decision on Nintendo’s appeal of the ‘796 final written decision issued by the PTAB found that substantial evidence supports the PTAB’s determination that the challenged claims of the ‘796 patent were adequately supported by the written description of the grandparent application. However, the Federal Circuit reversed and remanded because the panel did not believe all of the challenged claims were reduced to practice as the result of the 1998 working prototype. The existence of a reduction to practice associated with the 1998 working prototype is important because if all of the claims has been reduced to practice with the 1998 working prototype Yasushi would not be prior art.

On November 1st, a panel of administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) issued a final written decision which found that 11 claims of a networking patent held by Salt Lake City, UT-based wide area network (WAN) developer FatPipe Networks as being anticipated and obvious in light of prior art. A press release on the news from FatPipe, however, notes that the PTAB panel did not invalidate “a signature claim” of the patent covering a method for load balancing over disparate networks.

The legal principles set out above, while seemingly straight-forward enough, leave ample room for case-specific interpretation and application when it comes to the question of whether the use of a claimed invention in connection with carrying out clinical trials will constitute an invalidating public use. Patent applications are typically filed early on in the process of developing and commercializing a pharmaceutical drug product. One reason for this approach is to secure the earliest possible filing date thereby pre-dating as much would-be prior art as possible. Such would-be prior art, however, is not limited to that published or otherwise emanating from others but also includes time bars such as the public use bar. The circumstances under which clinical trials involving administration of a drug product that occur prior to the critical date may constitute an invalidating public use is a murky area of the law and courts’ decisions in this area are highly dependent on the facts of the case before them.

The Uniloc patent invalidated by the PTAB in this case is U.S. Patent No. 5490216, titled System for Software Registration and issued in February 1996. It claims a registration system for licensing execution of digital data in a use mode, the system including both local and remote licensee unique ID generating means, and a mode switching means operable on a platform which permits the use of digital data only if the locally-generated licensee unique ID matches the remotely-generated licensee unique ID. The innovation solved issues in prior art systems for software registration for software transferable by physical media which used shell programs or did not utilize information unique to the intended licensee which is distinguishable from the identification of the platform. According to data collected from Lex Machina, Uniloc’s ‘216 patent has been asserted in 65 cases filed in U.S. district court going back to September 2003.

On Wednesday, October 25th, the Cambridge, MA-based medical research center The Broad Institute filed a brief with the Court of Appeals for the Federal Circuit in response to an appeal filed by the University of California stemming from patent interference proceedings playing out at the Patent Trial and Appeal Board (PTAB). The Broad Institute’s filing is the latest salvo in a patent battle which has played out between developers of a gene editing technology, which could prove to be very important to the future of fighting disease in humans.

Crafting a proper hypothetical claim is a prerequisite to whether a theory of infringement under the doctrine of equivalents would also ensnare the prior art. The burden to present a proper hypothetical claim cannot be shifted, and a hypothetical claim cannot be broader for the alleged range of equivalents, and not otherwise narrower.