IP Blog

February 23

USPTO Memo 1/27/10 on overcoming 101 rejections for computer readable media claims by amending claims to add “non-transitory”

The USPTO published a memo (dated 1/27/10) by Director Kappos suggesting that applicants can overcome 101 rejections for computer readable media claims by amending the claims to to add the limitation “non-transitory" to the media. This is for cases where specification supports a viable “non-transitory” embodiment.

Below is an excerpt from the meme (emphasis added).

A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. $ I01 by adding the limitation "non-transitory" to the claim. Cf. Animals –Patentability, 110770) Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g.,Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998). (Emphasis added.)

Here is a link to the memo. http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf

For reference below is a link to the 2008 USPTO revised written description training materials.

http://www.uspto.gov/web/menu/written.pdf

I found out about the memo from the All Things Pros blog who found it on the IP Spotlight blog.

10:18 AM GMT | Read comments(0)

April 01

USPTO – Streamlines appeal brief review process - only the Chief Judge and his staff will conduct a compliance review of appeal briefs

David Kappos announced on his public Blog, (March 30,2010) that only the Chief Judge and his staff will conduct a compliance review of appeal briefs at the time of filing. This new process eliminates 2 layers of review; the examiner and the Patent Appeal Center. This should reduce processing time and yield more uniform decisions on formalities compliance.

To further reduce the number of noncompliant appeal briefs, the Chief Judge has posted on the USPTO website the “Top Eight Reasons Appeal Briefs are Non-Compliant”—which applicants should read closely to avoid the common mistakes that result in defective briefs and delays.

Blog post is here http://www.uspto.gov/blog/director/entry/streamlining_the_appeals_process_and

5:44 PM GMT | Read comments(0)

March 31

Ariad v. Eli Lilly - Fed Cir. reaffirms that § 112, first paragraph, contains a written description requirement separate from enablement

Ariad Pharmaceuticals, Inc. v. Eli Lilly (Fed. Cir. March 22, 2010) (En Banc Decision)

The Federal Circuit reaffirmed that § 112, first paragraph, contains a written description requirement separate from enablement. The court reversed the district court’s denial of JMOL and held the asserted claims of the ’516 patent invalid for failure to meet the statutory written description requirement.

Opinion: www.cafc.uscourts.gov/opinions/08-1248.pdf

patent in suit http://www.google.com/patents?vid=USPAT6410516

Overview from the opinion:

Ariad Pharmaceuticals, Inc., et al, Massachusetts Institute of Technology, the
Whitehead Institute for Biomedical Research, and the President and Fellows of Harvard
College (collectively, “Ariad”) brought suit against Eli Lilly & Company (“Lilly”) in the
United States District Court for the District of Massachusetts, alleging infringement of
U.S. Patent 6,410,516 (“the ’516 patent”). After trial, at which a jury found infringement,
but found none of the asserted claims invalid, a panel of this court reversed the district
court’s denial of Lilly’s motion for judgment as a matter of law (“JMOL”) and held the
asserted claims invalid for lack of written description. Ariad Pharms., Inc. v. Eli Lilly &
Co., 560 F.3d 1366 (Fed. Cir. 2009).
Ariad petitioned for rehearing en banc, challenging this court’s interpretation of
35 U.S.C. § 112, first paragraph, as containing a separate written description
requirement. Because of the importance of the issue, we granted Ariad’s petition and
directed the parties to address whether § 112, first paragraph, contains a written
description requirement separate from the enablement requirement and, if so, the scope
and purpose of that requirement. We now reaffirm that § 112, first paragraph, contains
a written description requirement separate from enablement, and we again reverse the
district court’s denial of JMOL and hold the asserted claims of the ’516 patent invalid for
failure to meet the statutory written description requirement.

Below are some sections of the opinion.

The asserted claims, rewritten to include the claims from
which they depend, are as follows:

80. [A method for modifying effects of external influences on a eukaryotic
cell, which external influences induce NF-κB-mediated intracellular
signaling, the method comprising altering NF-κB activity in the cells such
that NF-κB-mediated effects of external influences are modified, wherein
NF-κB activity in the cell is reduced] wherein reducing NF-κB activity
comprises reducing binding of NF-κB to NF-κB recognition sites on genes
which are transcriptionally regulated by NF-κB.

95. [A method for reducing, in eukaryotic cells, the level of expression of
genes which are activated by extracellular influences which induce NF-κB-
mediated intracellular signaling, the method comprising reducing NF-κB
activity in the cells such that expression of said genes is reduced], carried

144. [A method for reducing bacterial lipopolysaccharide-induced
expression of cytokines in mammalian cells, which method comprises
reducing NF-κB activity in the cells so as to reduce bacterial
lipopolysaccharide-induced expression of said cytokines in the cells]
wherein reducing NF-κB activity comprises reducing binding of NF-κB to
NF-κB recognition sites on genes which are transcriptionally regulated by
NF-κB.

145. [A method for reducing bacterial lipopolysaccharide-induced
expression of cytokines in mammalian cells, which method comprises
reducing NF-κB activity in the cells so as to reduce bacterial
lipopolysaccharide-induced expression of said cytokines in the cells],
carried out on human cells.

The claims are thus genus claims, encompassing the use of all substances that achieve
the desired result of reducing the binding of NF-κB to NF-κB recognition sites.
Furthermore, the claims, although amended during prosecution, use language that
corresponds to language present in the priority application. Specifically, the asserted
claims recite methods of reducing NF-κB activity, and more specifically reducing binding
of NF-κB to NF-κB recognition sites, in cells in response to external influences like
bacterial lipopolysaccharides. The specification filed on April 21, 1989, similarly recites
the desired goal of reducing NF-κB activity and binding to NF-κB recognition sites in
cells in response to such external influences. See ’516 patent col.3 l.59–col.4 l.19;
col.31 l.65–col.32 l.11; see also id. at col.2 ll.54-59. The specification also hypothesizes
three types of molecules with the potential to reduce NF-кB activity in cells: decoy,
dominantly interfering, and specific inhibitor molecules. Id. at col.37 l.43–col.38 l.22.

The Court stated the following with respect to whether originally filed claims met the written description requirement:

Although many original claims will satisfy the written description requirement, certain claims may not. For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.

Recognizing this, we held in Eli Lilly that an adequate written description of a
claimed genus requires more than a generic statement of an invention’s boundaries.
119 F.3d at 1568. The patent at issue in Eli Lilly claimed a broad genus of cDNAs
purporting to encode many different insulin molecules, and we held that its generic
claim language to “vertebrate insulin cDNA” or “mammalian insulin cDNA” failed to
describe the claimed genus because it did not distinguish the genus from other
materials in any way except by function, i.e., by what the genes do, and thus provided
“only a definition of a useful result rather than a definition of what achieves that result.”
Id.
We held that a sufficient description of a genus instead requires the disclosure of
either a representative number of species falling within the scope of the genus or
structural features common to the members of the genus so that one of skill in the art
can “visualize or recognize” the members of the genus. Id. at 1568-69. We explained
that an adequate written description requires a precise definition, such as by structure,
formula, chemical name, physical properties, or other properties, of species falling
within the genus sufficient to distinguish the genus from other materials. Id. at 1568
(quoting Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993)). We have also held that
functional claim language can meet the written description requirement when the art has
established a correlation between structure and function. See Enzo, 323 F.3d at 964
(quoting 66 Fed. Reg. 1099 (Jan. 5, 2001)). But merely drawing a fence around the
outer limits of a purported genus is not an adequate substitute for describing a variety of
materials constituting the genus and showing that one has invented a genus and not
just a species.

Slip. Op. at 20 -21.

Written Description standard:

Since its inception, this court has consistently held that § 112, first paragraph,
contains a written description requirement separate from enablement, and we have
articulated a “fairly uniform standard,” which we now affirm. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the description must “clearly
allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Id. at 1563 (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). In
other words, the test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Id. (quoting Ralston Purina Co. v. Far-
Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)); see also In re Kaslow, 707 F.2d
1366, 1375 (Fed. Cir. 1983).

Op at 23. (Bold added)

Standard for Written description: “possession as shown in the disclosure” Op. at 24.

Thus, “possession as shown in the disclosure” is a more complete
formulation. Yet whatever the specific articulation, the test requires an objective inquiry
into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.

Guidance for meeting the written description requirement:

There are, however, a few broad principles that hold true across all cases. We
have made clear that the written description requirement does not demand either
examples or an actual reduction to practice; a constructive reduction to practice that in a
definite way identifies the claimed invention can satisfy the written description
requirement. Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366-67 (Fed. Cir. 2006).
Conversely, we have repeatedly stated that actual “possession” or reduction to practice
outside of the specification is not enough. Rather, as stated above, it is the specification itself that must demonstrate possession. requirement does not demand any particular form of disclosure, Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997).

Op at 25. (Bold added)

No “Super enablement” standard for Chemical and Biotech. Op. at 26

The court evaluated the patent for compliance to the written description:

In accordance with Rochester, the ’516 patent must adequately describe the
claimed methods for reducing NF-κB activity, including adequate description of the
molecules that Ariad admits are necessary to perform the methods. The specification of
the ’516 patent hypothesizes three classes of molecules potentially capable of reducing
NF-κB activity: specific inhibitors, dominantly interfering molecules, and decoy
molecules.
We review the specification’s disclosure of each in turn to determine whether there is substantial evidence to support the jury’s verdict that the written description evidenced that the inventor possessed the claimed invention.

After reviewing the spec for support:

Whatever thin thread of support a jury might find in the decoy-molecule
hypothetical simply cannot bear the weight of the vast scope of these generic claims.
See LizardTech, 424 F.3d at 1345 (holding that “[a]fter reading the patent, a person of
skill in the art would not understand” the patentee to have invented a generic method
where the patent only disclosed one embodiment of it); Reiffin, 214 F.3d at 1345-46
(noting that the “scope of the right to exclude” must not “overreach the scope of the
inventor’s contribution to the field of art as described in the patent specification”); Fiers,
984 F.2d at 1171 (“Claiming all DNA[s] that achieve a result without defining what
means will do so is not in compliance with the description requirement; it is an attempt
to preempt the future before it has arrived.”); cf. Carnegie Mellon, 541 F.3d at 1126
(holding that the narrow description of the E. coli polA gene did not adequately support
a broad claim to the gene from any bacterial source). Here, the specification at best
describes decoy molecule structures and hypothesizes with no accompanying
description that they could be used to reduce NF-κB activity. Yet the asserted claims
are far broader. We therefore conclude that the jury lacked substantial evidence for its
verdict that the asserted claims were supported by adequate written description, and
thus hold the asserted claims invalid. (Op. at 37)

Conclusion:

For the foregoing reasons, we hold that the asserted claims of the ’516 patent are invalid for lack of written description, and we do not address the other validity issues that were before the panel.

11:53 AM GMT | Read comments(0)

March 30

Purpose or Intended Use in Preamble generally not limiting for an apparatus claim whose patentability is determined by the claimed structure

Michael Marrin & Etch-It, Inc. v. Jeffrey Griffin & Claudia Griffin, No. 2009-1031 (Fed. Cir. Mar. 22, 2010).

The district court found the asserted patent was invalid under 102(b) as anticipated by several patents. The district court did not treat the asserted claims’ preamble as a limitation because the preamble only was an intended use and the patentee did not demonstrate a clear reliance on the preamble during prosecution. With this claim construction, the district court found several patents that anticipated the structures in the asserted claims. The patentee appealed and the Federal Circuit affirmed.

The patentee conceived of the idea of using a scratch-off label to mark beverage containers and cups so that attendees of a gathering or party could keep track of their beverage cups. Figs from Patent 5154448 are shown below.

Claim 1 of the patent, which is representative of the four disputed claims, reads as follows: (Bold added)

1. A scratch-off label for permitting a user to write thereon without the use of a marking implement, comprising:

a permanent base having a colored near side which is normally visible to the user and having a far side; and

a coating of scratch-off non-transparent material having a color which contrasts with the color of the near side of the permanent base, which coating is applied directly onto the near side of the permanent base with sufficient thickness so as to obscure the color of the permanent base, and which when scratched off reveals the color of the near side of the permanent base.

The Griffins acknowledge that the prior art disclosed scratch-off devices. However, the Griffins contend that the prior art did not disclose the ability of a user of a scratch-off device to write without the use of a marking implement, which was disclosed in the preamble to the claims of the ’448 patent.

The Federal Circuit agreed with the district court ruling “that the “for permitting” language in the preamble was not a claim limitation based on its findings that (1) the preamble language added in the amendment only added a statement of a purpose or an intended use for the invention, and (2) the patentee did not demonstrate clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art. Marrin, 2008 U.S. Dist. LEXIS, at *2, 7.”

For apparatus claims, such as those in the ’448 patent, generally patentability “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).

The court compares the asserted Griffins claim with US 4241943 (Malinovitz) a card for showing parking times that has a similar structure (scratch off to reveal underlying layer). See US 4241943 (Malinovitz) fig 1 below.

Below is the "feature” chart the court used to anticipate Griffins with Malinovitz.

The court found the patent invalid as anticipated.

Judge Newman, in the dissent, offers reasons that the preable’s intended use should be a limitation for an apparatus claim.

Precedent establishes that the preamble limits the claims when it distinguishes the use of the claimed article from the prior art, see Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1323-24 (Fed. Cir. 2009), as well as when it contains language that is essential to the description of the invention, see In re Bulloch, 604 F.2d 1362, 1365 (CCPA 1979)

Practice pointer – An Apparatus claim must be distinguished from the prior art apparatuses by a difference in structure, not intended use or purpose. If you wish to claim a new use for a known apparatus, a method claim can be used.

Opinion http://www.cafc.uscourts.gov/opinions/09-1031.pdf

Vita-Mix Corp. v. Basic Holding, Inc., No. 08-1479 (Fed. Cir. Sept. 16, 2009)

http://caselaw.lp.findlaw.com/data2/circs/fed/081479p.pdf

10:05 PM GMT | Read comments(0)

March 14

35 USC 271(f) - does not apply to devices, supplied outside the US, that may be used to perform a patented method— Cardiac v. St. Jude

Cardiac Pacemakers v. St. Jude Medical, 2007-1296, –1347, (Fed. Cir 2009) The Federal Circuit, en banc, held that Section 271(f) does not encompass devices, supplied outside the US, that may be used to perform a patented method.

35 USC 271 defines Patent infringement. Section 271(f) is meant to prevent parties from avoiding infringement by shipping a patented device in smaller components and then assembling the components overseas. Section 271(f) creates a cause of action for infringement for supplying components of a patented invention for assembly outside the US.

In the case, St. Jude shipped Implantable cardioverter defibillators overseas. The patentee Cardiac had a method claim to administer a particular shock sequence using the defibillator. The patentee Cardiac argued St. Jude infringed under 271(f) where St. Jude shipped defibillator overseas that then were used to perform the patentee’s method.

The Federal Circuit, en banc, held that Section 271(f) does not encompass devices, supplied outside the US, that may be used to perform a patented method.

Federal Circuit limited the subject matter reach of 35 U.S.C. § 271(f), holding that the
statute does not apply to methods or device that may be used to practice the claimed method outside of the US.

Section 271(f) provides in full as follows: (emphasis added)

(1) Whoever without authority supplies or causes to be supplied in or from
the United States all or a substantial portion of the components of a
patented invention, where such components are uncombined in whole
or in part, in such manner as to actively induce the combination of such
components outside of the United States in a manner that would
infringe the patent if such combination occurred within the United
States, shall be liable as an infringer.
(2) Whoever without authority supplies or causes to be supplied in or from
the United States any component of a patented invention that is
especially made or especially adapted for use in the invention and not
a staple article or commodity of commerce suitable for substantial
noninfringing use, where such component is so made or adapted and
intending that such component will be combined outside of the United
States in a manner that would infringe the patent if such combination
occurred within the United States, shall be liable as an infringer.

The court found that “supplied” to mean the physical transfer of an object. Therefore, the court reasoned “because one cannot supply the step of a method, Section 271(f) cannot apply to method or process patents.”

For many patent holders, where both device claims and method claims can be included in issued patents, this case will not have much effect. However, for technologies where only method claims are available, this case can limit export damages (enforcement outside the US). Biotech companies who make products, such as diagnostic kits or assays that can only be claimed as methods will not be able to use section 271(f) for extraterritorial enforcement.

For software and internet companies, the Cardiac decision appears to be consistent with the NTP, Inc. V. Research in Motion, Ltd, 418 F.3d. 1282, (Fed. Cir. 2005). The NTP court held that Section 271(f) does not apply where RIM supplied BlackBerry handheld devices to customers in the United States, and use of those devices (in concert with a relay of the Blackberry network located in Canada) would infringe NTP’s patented method if all steps were performed in the United States. Id. at 1321.

Practice pointer – try to include many claim types (e.g,. device, method and manufacture) and write claims from the perspective a (one) potential infringer.

Opinion http://www.cafc.uscourts.gov/opinions/07-1296.pdf

8:34 PM GMT | Read comments(0)

March 11

Update on USPTO Green Technology Petition Pilot

On March 2, 2010, at the Biotechnology/ Chemical/ Pharmaceutical Customer Partnership meeting at the USPTO, Blaine Copenheaver, ( SPE, TC1600) gave a presentation on the USTPO’s Green Technology Petition Pilot. This pilot will advance “out of turn of the initial examination” certain “green Technology” applications. The pilot started 12/8/2009 and will run for 1 year and is limited to the first 3000 granted petitions. So far about 800 patent application petitions received.

Below is an outline of the presentation;

1. Authority and Overview: resources / overview
2. Petition Requirement: common errors and tips
3. Petition Review: process, statistics, examples
4. Future

The presentation can be downloaded here
http://www.cabic.com/bcp/030210/BCopenheaver_GT.ppt

Materials for the entire meeting can be found at http://www.cabic.com/bcp/

Here is a link to past meetings
http://www.uspto.gov/patents/init_events/bcp/index.jsp

keywords: clean technology, sustainability, uspto, renewable energy

8:57 AM GMT | Read comments(0)

March 10

Patent assignment assigning all continuation applications was ambiguous to previously issued patent – Euclid v. Vector (Fed. Cir. 2009)

Euclid Chemical Co. v. Vector Corrosion Tech., 561 F.3d 1340 (Fed. Cir., 2009)

A patent assignment assigning all continuation applications was ambiguous to a previously issued continuation patent not specifically identified in the assignment.

Practice Pointers:

Most patent assignments and licenses include listed patent applications and/or issued patents and a catchall clause to include related patent applications and patents, such as “any and all divisional applications, continuations, and continuations in part…” In Euclid, the court found for an assignment that listed a specific issued patent and several specific patent applications, that the standard clause for all continuation applications is not clear as to whether the assignment covers already issued continuation patents. The court looked at the assignment clause that covered a “issued US patent” (singular) as conflicting with the catchall continuation clause thus making the assignment ambiguous as to whether the unlisted issued continuation patent is assigned. This case shows that practitioners must be careful in drafting even routine clauses, consider the facts and to be clear as to which applications and patents are to be included and excluded.

The patent in issue was the No. 6,217,742 (the "'742 CIP patent") patent that was a "continuation-in-part of application No. 09/236,731, filed on Jan. 25, 1999, now Pat. No. 6,033,553 ....". The '742 CIP patent issued on April 17, 2001—before the date of the December 20, 2001 assignment. Id. at [45].

A simple time line is:

1) Parent 553 patent issues (patent-in-suit)

2) CIP 742 patent issues

3) Assignment executed - assigns parent issued 553 patent and all continuations.. (But did not expressly include the
CIP 742 patent number).

Court held the assignment of the CIP patent was ambiguous. Under Ohio state law “where a contract is ambiguous, a court may consider extrinsic evidence to ascertain the parties' intent..” The court remanded the case to the district court to determine whether the assignment, interpreted in light of the extrinsic evidence, transferred ownership of the CIP patent.

Practice tip: Make sure all issued patent numbers are included in assignments and assignment is clear. Need to carefully check even routine clauses and consider facts. Check for grammatical consistency (e.g., singular vs. plural). If a continuation application or continuation issued patent is not intended to be assigned, then write that in the assignment.

Here is the assignment (Bold added)

I, JACK BENNETT, [address], in consideration for $25,000.00 and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged do hereby sell and assign to VECTOR CORROSION TECHNOLOGIES LTD. [address] all my interest in the United States, Canada and in all other countries in and to my US, Canadian, and European applications for patents and issued U.S. patent, namely:

        1. Issued U.S. Patent 6,033,553. …..
        2. US Application No. 08/839,292 filed on April 17, 1997,
        3. US Application No. 08/731,248, filed on October 11, 1996 (now abandoned),
        4. EPO Application No. 99122342.1, filed November 9, 1999, and
        5. Canadian Application No. 2288630, filed November 8, 1999,

any and all divisional applications, continuations, and continuations in part together with the entire right, title and interest in and to said applications, and to all divisional applications, continuations, and continuations in part thereof, the right to claim priority therefrom under the International Convention, and any and all Letters Patent which may issue or be reissued for said invention to the full end of the term for which each said Letters Patent may be granted; and hereby authorize the ….

Below are relevant excepts from the opinion. (emphasis added)

When confronted with an issue of contractual interpretation, the role of a court is to give effect to the intent of the parties to the agreement. We examine the [contract] as a whole and presume that the intent of the parties is reflected in the language used in the [contract]. We look to the plain and ordinary meaning of the language used in the [contract] unless another meaning is clearly apparent from the contents of the [contract]. When the language of a written contract is clear, a court may look no further than the writing itself to find the intent of the parties. As a matter of law, a contract is unambiguous if it can be given a definite legal meaning.
        On the other hand, where a contract is ambiguous, a court may consider extrinsic evidence to ascertain the parties' intent....
….        We disagree with the district court that the Assignment unambiguously transferred ownership of the '742 patent to Vector. The district court was correct that the language of the Assignment purports to convey "US Patent 6,033,553" and "any and all divisional applications, continuations, and continuations in part." Euclid, slip op. at 4. The district court was also correct that the '742 patent is a continuation-in-part of the '553 patent, as the Related U.S. Application Data on the face of the '742 patent makes clear. Id. at 6; see also '742 patent at [63].
        The Assignment, however, also includes language that suggests that it was not intended to effect an assignment of the '742 patent. In particular, the Assignment specifically assigns all interest in and to the inventor's "US, Canadian, and European applications for patents and issued U.S. patent." Notably, this language refers to "applications"—plural—but "issued U.S. patent"—singular. Had the assignee intended, through the assignment of "continuations in part" to assign other issued U.S. patents, it would be expected that the Assignment would have said that the inventor was assigning his "issued U.S. patents"— plural—and even recited the patent number of the issued '742 patent.
        At bottom, we cannot give the Assignment a "definite legal meaning." Westfield, 797 N.E.2d at 1261. Under one reasonable interpretation, the Assignment includes the '742 patent, because it issued from a continuation-in-part of the '553 patent. But under another reasonable interpretation, the Assignment excludes the '742 patent, because it was an already issued patent, not an application, at the time of the assignment. We therefore conclude that the Assignment is susceptible to at least two reasonable interpretations and is therefore ambiguous under Ohio law. See Potti, 938 F.2d at 647. Extrinsic evidence therefore should have been considered to ascertain the parties' intent. See Westfield, 797 N.E.2d at 1261.
        In its brief on appeal, Euclid argues that substantial extrinsic evidence supports its view that the Assignment did not include the '742 patent. Specifically, Euclid points to evidence concerning Vector's recording of the assignment of the '553 patent but not the '742 patent, the inventor's payment of maintenance fees and attempted licensing negotiations after the date of the Assignment, and the subsequent execution of a different assignment by the inventor. Vector, however, has not yet had the opportunity or the obligation to challenge Euclid's extrinsic evidence or to bring forward its own evidence of intent. We therefore remand to the district court to allow that court to determine in the first instance—either through a subsequent motion for summary judgment, or at trial— whether the Assignment, interpreted in light of relevant extrinsic evidence, transferred ownership of the '742 patent to Vector.

Opinion http://www.cafc.uscourts.gov/opinions/08-1170.pdf

1:10 PM GMT | Read comments(0)

March 05

PUBPAT releases free claim construction dictionaries

The PUBPAT as published free claim construction dictionaries with claim term definitions from patent court cases.

On March 1, 2010, the Public Patent Foundation, Inc. ("PUBPAT") (at the Benjamin N. Cardozo School of Law) announced that Dr. David Garrod, PUBPAT's Senior Litigation Counsel, has decided to release his groundbreaking claim construction dictionaries free of charge through PUBPAT's web site. They are available for immediate download as PDF files using the following link: http://www.pubpat.org/garrodglossariesreleased.htm

There are three Glossaries of Judicial Claim constructions:

Electronics, Computer and Business Method Arts
Mechanical, Electro-Mechanical and Medical Devices Arts
Chemical, Pharmaceutical and Biotechnology Arts

“Each of the released volumes covers district and appellate court decisions in the indicated subject areas, starting with the Federal Circuit's 1995 Markman decision and running through the end of 2009. Content appears in an easy-to-read dictionary format, indexed by the exact claim language construed. Because the usefulness of any particular construction depends critically on the reason that the court adopted the construction in question (e.g., was it "plain meaning" or a definition in the patent), each entry is endnote-linked to the relevant decisional text, with the portions of the full-text that define the particular construction highlighted for easy reference.”

See Public Patent Foundation, Inc. ("PUBPAT") ‘http://www.pubpat.org/garrodglossariesreleased.htm

I found this info on the “Gray on Claims” blog

http://www.grayonclaims.com/home/2010/3/4/public-patent-foundation-releases-free-claim-construction-di.html

11:05 AM GMT | Read comments(0)

March 01

Genus Claim element "single action of a user input device” found supported under 112P1 by specification “a single click of a computer mouse”

TRADING TECHNOLOGIES INTERNATIONAL, INC., v ESPEED, INC., 2008-1392, -1393, –1422 (Fed. Cir. Feb. 25, 2010)

One issue in TTI v Espeed was whether the provisional patent application provided support (112P1 - adequate written description) for a broader claim in the regular patent application that claimed priority back to the provisional application. The provisional application describes only one species while the regular application claimed a broader genus. “ The provisional application never refers to a “single action of a user input device,” but instead refers solely to “a single click of a computer mouse.”” Op. p. 28. The Court found the record contained substantial evidence to support the jury’s verdict that the provisional application’s written description was adequate.

The provisional application distinguished between order entries performed in a single action and multiple-step actions. “Moreover, the parties’ experts did not dispute that one of ordinary skill in the art would have known about other forms of “single action” such as a double-click or pressing a key.” Op. p. 32.

Below are relevant sections from the opinion.

Excerpts of Claim 1 of the '304 patent:

A method for displaying market information relating to and facilitating trading of a commodity ….. , the method comprising:
dynamically displaying a first indicator in one of a plurality of locations in a bid display region, ……; and

in response to a selection of a particular location of the order entry region by a single action of a user input device, setting a plurality of parameters for a trade order relating to the commodity and sending the trade order to the electronic exchange.

Regarding claim interpretation, the opinion stated:

The district court construed "single action of a user input device" to mean "an action by a user within a short period of time that may comprise one or more clicks of a mouse button or other input device." Trading Techs., 2006 U.S. Dist. LEXIS 80153, at *11. In this context, the word "an action" means one user action. An action may include multiple sub-elements as long as the user views all sub-elements as one user action (e.g., double-click comprising of two single-clicks is "an action"). The invention is different from prior art inventions that required a trader to click on multiple locations before submitting the order. The district court's construction correctly sets objective boundaries by distinguishing the invention from multiple-action systems found in the prior art.

The court presents the legal standard as:

Claims enjoy the earlier filing date only if the provisional application provided adequate written description under 35 U.S.C. § 112, ¶ 1. New Railhead Mfg. v. Vermeer Mfg., 298 F.3d 1290, 1294 (Fed. Cir. 2002). The "prior application itself must describe an invention . . . in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought." Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997). Therefore, the provisional application must describe the invention in such a way that one of ordinary skill in the art "would understand that the genus that is being claimed has been invented, not just the species of a genus." Carnegie Mellon Univ. v. Hoffman-La Roche, Inc., 541 F.3d 1115, 1124 (Fed. Cir. 2008).

The court held :

Turning to the merits, the record shows substantial evidence to support the jury's verdict that the provisional application's written description was adequate. TT's expert, Craig Pirrong explained that the provisional application distinguished between order entries performed in a single action and multiple-step actions. He did not distinguish a single-click from other types of single actions. Therefore, one of ordinary skill in the art could read the provisional application to encompass any single actions.

Moreover, the parties' experts did not dispute that one of ordinary skill in the art would have known about other forms of "single action" such as a double-click or pressing a key. Considering the undisputed knowledge of those skilled in the art, disclosure of a species in this case provides sufficient written description support for a later filed claim directed to a very similar and understandable genus. Accordingly, the patents-in-suit are entitled to claim priority to the provisional application.

The patents asserted were U.S. 6,766,304 and 6,772,132.

Opinion: http://www.cafc.uscourts.gov/opinions/08-1392.pdf

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February 26

Patent Case Management Judicial Guide 2009

The Federal Judicial Center published a “Patent Case Management Judicial Guide” that is intended to be a guide for district judges. This provides a good overview of the trial process from the judge’s point of view. Chapter 11 is a primer on patent law. The guide is free and available online here as a pdf.

The guide is described as:

A comprehensive, user-friendly, and practical judicial guide for managing patent cases. ….. In addition, patent cases often entail distinctive and difficult discovery issues, extensive use of experts, and particularly complex dispositive and pretrial motion practice. The authors surveyed federal judges and describe their approaches and best practices for these and other aspects of patent case management.

The following link is to the Federal Judicial Center publication in PDF format.

Link or download

“Patent Case Management Judicial Guide” by Peter S. Menell; Lynn Pasahow; James Pooley; Matthew Powers - 2009, 650 pages.

Partial Summary Table of Contents
Chapter 1. General Principles
Chapter 2. Early Case Management
Chapter 3, Preliminary Injunction
Chapter 4. Discovery
Chapter 5. Claim Construction
Chapter 6. Summary Judgment
Chapter 7. Pretrial Case Management
Chapter 8. Trial
Chapter 9. Post-Trial
Chapter 10. ANDA Cases
Chapter 11. Patent Law Primer

For more info see:

http://www.fjc.gov/public/pdf.nsf/lookup/patent01.pdf/$file/patent01.pdf

http://www.fjc.gov/

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1328659

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February 24

WIPO Magazine - Special Edition: IP Litigation Costs

This edition of the bi-monthly World Intellectual Property Organization (WIPO) magazine discuses international IP ligation costs.

The table of contents is below:

See http://www.wipo.int/wipo_magazine/en/2010/01/

9:27 PM GMT | Read comments(0)

February 22

New USPTO Examiner Count System Went Into Effect Last Week

In a change that could have a significant impact on US patent prosecution and patent quality, the USPTO implemented changes to the “count system”- the time and measurement system examiners are paid and measured on. This effects how much time an examiner will spend on a task and how much she is rewarded for an outcome.

From the press release:

The count system is the methodology for determining the amount of time in which a patent examiner is expected to complete a patent examination and the credit that is given for each stage of an examination. These changes, announced in conjunction with the Patent Office Professional Association (POPA), the union that represents patent examiners, place emphasis on complete and thorough initial examination, and are expected to decrease redundancy and encourage quicker resolution of issues in the patent application process. The new count system should result in earlier identification of patentable subject matter, which will benefit applicants while enabling the USPTO to function more efficiently. (See count system press release at http://www.uspto.gov/news/pr/2009/09_19.jsp.)

It addresses the following areas of change:

Improved working conditions: The revised count system provides incentives to encourage examiners to do a high-quality first action, and shifts resources from a focus on examiner recertification to front-end quality improvements. This change in incentives will ultimately encourage examiners to dispose of applications more quickly.
More time for examiners: The changes will give examiners more time overall, more time for a first action on the merits, and time for examiner-initiated interviews, while decreasing credits on requests for continued examination (RCEs) and providing consistent credits for transferred or inherited amendments.
Process changes: These changes will increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems.

For an in-depth analysis see the Task Force Proposal 2009-09-30

http://www.uspto.gov/web/offices/ac/ahrpa/opa/documents/briefing_for_corps-final_draft-093009-external-jrb.pdf

Press Release : http://www.uspto.gov/news/pr/2010/10_08.jsp

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USPTO launches “Inventors Eye” - a new electronic newsletter for independent inventors

The USPTO Launched the “Inventors Eye”, a new bi0monthly electronic publication. Inventors Eye is for and about America’s independent and small entity inventor community.

The Inventors Eye will cover tips on working with the USPTO; events, organizations and meetings of interest to the community; issues that impact independent and small entity inventors; and stories about successful inventors.

The Feb 2010 issues contents:

Patent Reform
An Open Letter
Protect Your Innovation: Avoid Scams
By Ronald Jaicks : Office of the Solicitor
Spark of Genius: The Spiral Eye Needle
By John Calvert : Inventors Assistance Center
Advice
Do Your Homework
Events
Where Independent Inventors Meet
Network
Organizations for Inventors

Click here to subscribe to Inventors Eye.

See http://www.uspto.gov/inventorseye/

8:43 PM GMT | Read comments(0)

February 11

Fed. Cir. Clarifies that for infringement, product-by process claims are limited by the process

In Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282, No. 07-1400, –1406, (Fed. Cir. May 19, 2009), the Federal Circuit held that “process terms in product-by-process claims serve as limitations in determining infringement.” That is a product-by process claim is interpreted as a process claim for determining infringement and that a product-by process claim is not infringed by products made using non-claimed processes. With this decision, the court settled a long standing split in the court’s precedents. This case appears to reduce the value of product-by process claims.

The court adopted the rule from Atlantic Thermoplastics Co., Inc. v. Faytex Corp., 970 F.2d 834 (Fed. Cir. 1992) which “construed
product-by-process claims as limited by the process. Id. at 846-7.” The court expressly overruled the Scripps Clinic & Research Foundation v. Genetech, Inc., 927 F.2d 1565 (Fed. Cir. 1991) holding that process terms are not considered claim limitations for determining infringement.

From a policy viewpoint, product-by process claims developed from a need to enable a patentee to claim a patentable product that could not be defined, measured or characterized other than by the process by which it is made. The court’s majority appears to think that with modern technology, that most products can be described by structure or composition and that claiming a product by it’s process is not needed and is detrimental.

The claims at issue from U.S. Patent No. 4,935,507 (the '507 patent) were: (Emphasis added)

2. Crystalline 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-vinyl-3-cephem-4-carboxylic acid (syn isomer) which is obtainable by acidifying a solution containing 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-vinyl-3-cephem-4-carboxylic acid (syn isomer) at room temperature or under warming.

3. Crystalline substance of claim 2, wherein a solution containing 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-vinyl-3-cephem-4-carboxylic acid (syn isomer) is an aqueous solution of an alkali metal salt of said compound.

4. Crystalline substance of claim 3, wherein the acidifying of the solution is carried out at the temperature from room temperature to 40.degree. C. at the pH from 1 to 4.

The court held that Claim 2, “which is obtainable by” to be a product-by process claim.

The dissenting opinions raise many interesting issues.

Note: that the USPTO evaluates the patentability of product-by process claims only by the structure implied by the steps, not by the process limitations. See MPEP 2113.

The Abbott labs ruling has wide ramifications for patent practitioners, applicants, and potential infringers of product by process claim patents. Patentee’s should be try to obtain product claims and realize that process limitations in product by process claims can be avoided by potential infringers by using a different process. It is best to avoid product-by process claims unless the product can not be distinguished prior prior art using structure/composition. Applicants with pending applications should evaluate whether additional claims types or applications should be prosecuted. Parties accused of infringement of only product-by process claims can consider the process limitation and also consider changing their process to a process not claimed in the product-by process claims.

1:59 PM GMT | Read comments(0)

Products sold “Free on Board” or “f.o.b.” Hong Kong found sold in US under 271(a) where intended for retail sale within US

SEB S.B., and T-Fal v. Montgomery Ward & Co., 2009-1099, -1108, –1119 (Fed. Cir. 2010)

Section 271(a) makes it an act of infringement to “without authority make[], use[],
offer[] to sell, or sell[] any patented invention, within the United States.” Op. p. 20.

Pentalapha (accused infringer) “sold these deep fryers to its three customers free on board Hong Kong or mainland China. “Free on board,” or “f.o.b.,” is a “method of shipment whereby goods are delivered at a designated location, usually a transportation depot, at which legal title and thus the risk of loss passes from seller to buyer.” Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353, 1358 n.1 (Fed. Cir. 2008).” Op. p. 4.

Pentalpha argued that the sale occurred overseas because the products were delivered to the buyers f.o.b. Hong Kong or China.

This court has “rejected the notion that simply because goods were shipped f.o.b., the location of the ‘sale’ for the purposes of § 271 must be the location from which the goods were shipped.” Lightcubes, 523 F.3d at 1370. Op. p. 21.

The court ruled that the affixing of US trademarks, US electrical fittings, US destination, and intended US retail destinations were sufficient for the jury to find that the sales were within the US.

Other than the f.o.b. terms in the invoices presented to the jury, the record shows that Pentalpha intended to sell its deep fryers directly into the United States. Pentalpha itself affixed the American trademarks of Sunbeam, Montgomery Ward, and Fingerhut to the deep fryers, and it manufactured the deep fryers with North American electrical fittings. Moreover, the invoices between Pentalpha and the three U.S. companies all In sum, this court does not perceive any fundamental error with the jury instructions in light of the record evidence. Op. p. 21.

Case involves many other interesting issues

US 4,995,312 Patent at issue: http://www.google.com/patents/about?id=XN0pAAAAEBAJ&dq=4,995,312

Opinion: http://www.cafc.uscourts.gov/opinions/09-1099.pdf

9:41 PM GMT | Read comments(0)

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William John Stoffel Esq.

Patent and IP Law

Vita-Mix Corp. v. Basic Holding, Inc., No. 08-1479 (Fed. Cir. Sept. 16, 2009)