February 2018

Must Examiners Now Cite the Specification to Support Broadest Reasonable Interpretation?

The Patent Trial & Appeal Board applied In Re: Smith Int’l to limit the broadest reasonable interpretation of claim language in Ex parte David Ben Yair (Appeal 2017-002190, decided Jan. 10, 2018).  In this case, the claim is directed toward a composite suit including “an inner suit” and “an outer suit,” and the prior art discloses a single article of clothing including an outer layer and an inner layer. The PTAB agreed with the appellant that, based on the specification of the appealed application, the claims required two pieces of clothing. Based on this interpretation the PTAB reversed the prior art rejection. The relevant portion of the claim is as follows: 1. A composite suit for protection of a wearer’s body from heat, the composite suit comprising: an inner suit adapted to be positioned on the wearer’s body and covering at least a substantial portion of the wearer’s body, the inner suit being short sleeved or sleeveless and extending in length to cover at least a portion of the lower portion of the wearer’s body; an outer suit adapted to be positioned overlying said inner suit on the wearer’s body, the outer suit having sleeves and pant legs and adapted… Read More »Must Examiners Now Cite the Specification to Support Broadest Reasonable Interpretation?

Controlling Video Playback Preferences Not Patent-Eligible

Claims reciting a “method of playing back a recorded signal” are “directed to the [patent-ineligible] abstract idea of choosing to playback media with or without playback preferences,” held the court in D&M Holdings, Inc. v. Sonos, Inc., No. 16-141-RGA (D. Del. Feb 16, 2018).  The court thus granted summary judgment of invalidity under 35 U.S.C. § 101 of U.S. Patent No. 7,995,899. Claim 1 of the ’899 patent recites: 1. A method of playing back a recorded signal, comprising: obtaining a recording identifier corresponding to the recorded signal; comparing the recording identifier with previously stored identifiers in a playback preference database; and reproducing the recorded signal using previously stored preferences if the recording identifier is found in the playback preference database and using default preferences if the recording identifier is not found in the playback preference database. Evaluating the claim under the two-part Alice test, the court agreed with the defendant’s argument “that claim 1 is ‘directed to the well-known practice of choosing to [play back] media (e.g., a DVD movie) with or without playback preferences (e.g., volume level, surround sound mode, the viewing angle, etc.), which can be (and was previously) performed entirely by a human.’” The plaintiffs’ argument… Read More »Controlling Video Playback Preferences Not Patent-Eligible

Comments in the Spec that Override Claim Differentiation

In constructing a term in the independent claim in the inter parte review of Kranos Corporation v. Riddell, Inc., (Case IPR2016-01649, Final Written Decision on Feb. 7, 2018),  the Patent Trial & Appeals Board rejected the application of the doctrine of claim differentiation based on a clear definition of the term that was provided in the specification. The claim term at issue is “releasable coupler mechanism” in claim 1. In the decision to institute, the PTAB interpreted that term to mean “a coupler mechanism that does not employ a threaded connector, such as a screw, that is rotated to attach or detach a component, such as a face guard.” Dependent claim 2 recites the negative limitation that “the actuation force lacks a rotational component.” In the Final Written Decision, the PTAB initially indicated that this dependent claim suggested that, under the doctrine of claim differentiation, the construction of the phrase “releasable coupler mechanism” in independent claim 1 must be broader than dependent claim 2 and thus, claim 1 is not limited a releasing motion that lacks rotation.  However, strong evidence in the specification led the Board to decide otherwise.  For example, the Abstract describes that the quick release connector allows… Read More »Comments in the Spec that Override Claim Differentiation

Patent-Eligibility and Graham v. John Deere

In vacating a motion to dismiss because it disagreed with a district court’s finding that patent claims were “invalid as directed to ineligible subject matter under 35 USC § 101,” a Federal Circuit panel has made explicit a debate about whether patent-eligibility is a question of law or requires factual determinations. Aatrix Software, Inc. v. Green Shades Software, Inc., No. 2017-1452 (Fed. Cir. Feb. 14, 2018) (precedential). Judge Moore, joined by Judge Taranto, wrote the majority opinion. Judge Reyna concurred in part and dissented in part.   As noted in the PatentlyO blog, the outcome of this debate, raised in Judge Moore’s recent opinion in Berkheimer v. HP, Inc., has important ramifications for litigants seeking to resolve patent disputes at the pleading stage. But more than that, what if patent examiners were required to make explicit factual findings in order for a patent-eligibility rejection to be sustained? U.S. Patent Nos. 7,171,615 and 8,984,393 are each directed to a “method and apparatus for creating and filing forms.” The court considered claim 1 of the ’615 patent as representative: 1. A data processing system for designing, creating, and importing data into, a viewable form viewable by the user of the data processing system,… Read More »Patent-Eligibility and Graham v. John Deere

Few Factual Allegations Enough to Allege Patent Infringement

Only a few factual allegations are required to survive a Motion to Dismiss a complaint alleging patent infringement, held the Southern District of Florida in Raptor, LLC. and Concrete Services, LLC. v. Odebrecht Construction, Inc. and Barreiro Construction Corp., NO. 17-21509-CIV-ALTONAGA (S.D. Fla. Feb. 13, 2018). Plaintiffs own U.S. Patents 8,920,068, 8,956,075, and 9,435,085, directed to concrete structure formation. Defendant Odebrecht is a prime contractor and Defendant Barreiro is their hired subcontractor. Plaintiffs allege direct infringement of the asserted patents and that Odebrecht induced Barreiro’s infringement. Defendants filed a Motion to Dismiss the patent infringement charges under F.R.C.P. 12(b)(6). Plaintiffs had already lost a Motion to Dismiss on their original Amended Complaint, and this Motion to Dismiss was for Plaintiff’s Second Amended Complaint. To survive a motion to dismiss under 12(b)(6) the complaint must include facts that, accepted as true, state a plausible claim of relief. The facts must allow the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. The court construes the facts most favorably to the plaintiff. On direct infringement, Plaintiffs alleged a joint enterprise between the Defendants. Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir.… Read More »Few Factual Allegations Enough to Allege Patent Infringement

Distribution Agreement held to be “Offer for Sale”

The Federal Circuit held a distribution agreement including transfer of title to the distributor and exclusivity in the United States for three years to be an “offer for sale” under the on-sale bar. In The Medicines Company v. Hospira, Inc., (Fed. Cir. Feb. 6, 2018) the Medicines Company (MedCo) appealed findings of no infringement made by the U. S. District Court for the District of Delaware. Hospira cross-appealed the district court’s finding that a distribution agreement did not constitute an invalidating “offer for sale” under 35 U.S.C. §102(b). MedCo owns U.S. Patent Nos. 7,582,727 and 7,598,343, both filed on July 27, 2008. The patents covered an improved mixing process for manufacturing bivalirudin. MedCo had used bivalidurin for almost 20 years to manufacture Angiomax, which represents 90% of its revenues. The improved process allowed MedCo to more consistently manufacture Angiomax within a specified maximum impurity level. Ben Venue Laboratory, a contract manufacturer for MedCo, first incorporated the patented mixing process on Oct. 25, 2006. On February 27, 2007, MedCo entered into a Distribution Agreement with Integrated Commercialization Solutions, Inc. (ICS). The agreement stated that MedCo “now desire[d] to sell the Product” to ICS, and ICS “desire[d] to purchase and distribute the… Read More »Distribution Agreement held to be “Offer for Sale”

“Minimal Redundancy” Makes Patent Claim Indefinite under § 112

The phrase “minimal redundancy” in a patent claim was indefinite under 35 USC § 112 where the patent specification inconsistently described levels of redundancy achieved by its system.  Berkheimer v. HP, Inc., No. 2017-1437 (Fed. Cir. Feb 8, 2017) (precedential) (opinion by Judge Moore, joined by Judges Taranto and Stoll). Accordingly, the court affirmed a district court’s summary judgment that claim 10 of US Patent No. 7,447,713 was indefinite. The court also addressed the patent-eligibility of other claims of the ’713 patent; the patent-eligibility issues are dealt with in another post. Claim 10 of the ’713 patent recites: 10. An object, oriented archival system comprising: a storage medium, and a set of executable instructions for establishing an archive of documents represented by linked object oriented elements stored in the medium, wherein the archive exhibits minimal redundancy with at least some elements linked to pluralities of the elements and wherein some of the instructions, in response to a selected editing command, alter at least one element common to and linked to a selected plurality of other elements to thereby effect a one-to-many editing process and additional instructions for compiling an output file, in a selected format. Under the “reasonable certainty” standard… Read More »“Minimal Redundancy” Makes Patent Claim Indefinite under § 112

Independent Claim Not Representative for Patent-Eligibility

Considering the patent-eligibility of claims directed to archiving digital assets, the Federal Circuit has affirmed a district court decision invalidating an independent claim under 35 USC § 101 and Alice, while vacating and remanding a judgment that certain dependent claims were patent-ineligible. Berkheimer v. HP, Inc., No. 2017-1437 (Fed. Cir. Feb 8, 2018) (precedential) (opinion by Judge Moore, joined by Judges Taranto and Stoll). Along the way, the court chastised the District Court for using independent claim 1 of US Patent No. 7,447,713 as representative, while ignoring the patent owner’s separate arguments concerning dependent claims 4-7. The court also affirmed a holding of indefiniteness; that holding is discussed in this blog a separate post. Claims 1 and 4 of the ’713 patent recites as follows (with claims 5-7 depending from claim 4): 1. A method of archiving an item comprising in a computer processing system: presenting the item to a parser; parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith; evaluating the object structures in accordance with object structures previously stored in an archive; presenting an evaluated object structure for manual reconciliation at least where there is a… Read More »Independent Claim Not Representative for Patent-Eligibility

When to Convert a CIP Patent Application into a Divisional

The Federal Circuit recently clarified the limits of the safe harbor provision of 35 USC §121. In In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision affirming invalidity of claims of US Patent 6,284,471 under the doctrine of obviousness-type double patenting. As a reminder, § 121 states in part: If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. . . The ’471 patent issued from a continuation-in-part (CIP) patent application, no. 08/192,093.  The ’093 application claimed priority to multiple other applications, and was part of a somewhat complicated family of applications and patents, whose relationships are diagramed below. The ’471 patent was challenged in an ex parte reexamination under the doctrine of obviousness-type double patenting over US Patent 5,656,272 During the reexamination, and to overcome an obviousness-type double patenting… Read More »When to Convert a CIP Patent Application into a Divisional

CAFC: “Reciprocate” and “Translate” are not Distinct Motions

In Smith & Nephew, Covidien v. Hologic, (Fed. Cir., 2018) the CAFC interpreted the claim phrase “simultaneously rotate, translate, and reciprocate” such that reciprocating includes a translating motion, but is not necessarily a distinct motion. The CAFC based this interpretation on both the plain and ordinary meaning of the terms “translate” and “reciprocate” and also on the text of the detailed description. Claim 1 recites: 1. A surgical instrument, comprising: a cutting member including an implement for cutting tissue; and a drive coupled to the cutting member to simultaneously rotate, translate, and reciprocate the cutting member in response to only a rotational force applied to the drive in a single direction and to cut tissue during simultaneous rotation and translation of the cutting member; wherein the drive includes a drive member attached to the cutting member, the drive member including a helical groove, and the drive includes a translation piece disposed in the groove such that rotary driving of the drive member results in simultaneous reciprocation of the drive member relative to the translation piece. In an ex parte re-examination, the Board concluded that “translation” is movement from one place to another, and that “reciprocation” is alternating forward and backward… Read More »CAFC: “Reciprocate” and “Translate” are not Distinct Motions