June 2018

Arguments in Patent Appeal Reply Brief Wrongly Ignored

The Federal Circuit has clarified what arguments may be made in a reply brief during a patent appeal. In In Re: Durance, No. 2017-1486 (Fed. Cir. Jun. 1, 2018), the Federal Circuit vacated the PTAB’s obviousness decision and remanded the case back for reconsideration because the PTAB failed to properly consider arguments made in Applicant’s reply brief.  At issue was US Patent Application No. 12/682,989. Representative claim 1 on appeal recites: An apparatus for dehydrating organic material,comprising: (a) a vacuum chamber having an input end for introduction of a container for the organic material into the vacuum chamber and a discharge end for removal of the container; (b) a microwave generator; (c) a microwave-transparent window for transmission of microwave radiation from the microwave generator into the vacuum chamber; (d) means for reducing pressure inside the vacuum chamber; (e) means for loading the container into the input end of the vacuum chamber; (f) means for rotating the container inside the vacuum chamber so as to tumble the organic material in the container; (g) means for moving the rotating container through the vacuum chamber from the input end to the discharge end thereof; and (h) means for unloading the container of dehydrated… Read More »Arguments in Patent Appeal Reply Brief Wrongly Ignored

When is Patent Prior Art Distinct but Not Different?

Where distinct physical concepts recited in a patent claim and applied prior art are related and can achieve same results, do not count on being able to distinguish teachings of the prior art.  In Mobileye Vision Technologies Ltd. v. iOn Road, Ltd., No. 2017-1984 (Fed. Cir. June 12, 2018) (non-precedential), a patent claim recited determining “a likelihood of collision responsive to whether or not the lateral displacement substantially uniformly approaches zero.” The Federal Circuit held this claim obvious, under 35 U.S.C. § 103, over prior art showing use of a constant lateral velocity, rather than lateral displacement, to determine a point of intersection. Accordingly, the court agreed with both the patent examiner in inter partes review, and the Patent Trial and Appeal Board (PTAB), that claim 6 of US Patent No. 7,113,867 would have been obvious over a combination of references including US Patent No. 4,257,703. The patent owner had argued that the PTAB had ignored the claim’s requirement that the lateral displacement approach zero “substantially uniformly.” According to the patent owner, “substantially uniformly” was a limitation on “how the lateral displacement approaches zero, not just whether it approaches zero.” (Emphasis in original.) But the Federal Circuit agreed with the… Read More »When is Patent Prior Art Distinct but Not Different?

DDR Holdings Saves Other DDR Holdings Patents

The Federal Circuit’s famous (or infamous) decision that one DDR Holdings’ patent was not invalid under 35 U.S.C. § 101 was used to support a district court’s denial of a motion for judgment of § 101 for three other DDR Holdings’ patents.  In DDR Holdings, LLC v. Priceline.com, LLC, No. 17-498 (D. Del. June 5, 2018), the court denied a motion for judgment on the pleadings, because the three present patents-in-suit share the same inventive concept” as U.S. 7,818,399, which the Federal Circuit held patent-eligible in its 2014 decision in DDR Holdings, LLC v. Priceline.com, LLC. The previously-litigated ’399 patent is entitled “Methods of expanding commercial opportunities for internet websites through coordinated offsite marketing,” and claims, in a nutshell, one online merchant to presenting retail opportunities framed with branding of another online merchant.  DDR Holdings’ three patents now at issue are the following: S. 8,515,825, Methods of expanding commercial opportunities for internet websites through coordinated offsite marketing; S. 9,043,228, Specially programmed computer server serving pages offering commercial opportunities for merchants through coordinated offsite marketing; and S. 9,639,876, Method and computer system for serving commerce information of an outsource provider in connection with host web pages offering commercial opportunities. The Federal… Read More »DDR Holdings Saves Other DDR Holdings Patents

“Program,” “UI Code,” Not Means-Plus-Function Terms

The Federal Circuit has held that claim terms “program” and “user interface code,” as used in the phrases “program that can operate the movement of the pointer” and “user interface code being configured to detect one or more locations touched by a movement of a user’s finger” are not subject to interpretation as “means-plus-function” limitations. Zeroclick, LLC, v. Apple Inc., (Fed. Cir. June 1, 2018) (precedential). The patents-in-suit were U.S. patents 7,818,691 and 8,549,443. Zeroclick alleged that Apple infringed claims 2 and 52 of the ‘691 patent and claim 19 of the ‘443 patent. Apple asserted invalidity of those claims for indefiniteness. The claims, Apple asserted, recited means-plus-function terms under 35 U.S.C. §112 ¶6 (post AIA 35 U.S.C. §112(f)) without sufficient supporting structure in the specification. Claim 2 of the ‘691 patent and claim 19 of the ‘443 patent are representative. A graphical user interface (GUI), which may comprise an update of an existing program, that may fully operate a GUI by a two step method of movement of a pointer (0) to operate one or more functions within the GUI, wherein, said existing program is any existing program that can operate the movement of the pointer (0) over a… Read More »“Program,” “UI Code,” Not Means-Plus-Function Terms

Patent Drafting Tip: Take Care with Open-Ended Descriptions

Be careful with the conventional wisdom that tells a patent drafter to use permissive, open-ended language when describing features of an invention.  Like me, you may have been taught to avoid “patent obscenities” like “invention,” “objects,” etc., and to use permissive helping verbs wherever possible, i.e., “the widget [could, might, can, may, etc.] be blue,” rather than “the widget is blue.”  Be careful: the conventional advice is good advice most of the time – but not, I believe, all of the time. Consider this patent drafting guideline: A patent specification should use verbs of possibility by default. However, in describing various embodiments, use limiting verbs for features that are necessarily present in every embodiment. This is guidance for lawyers, so of course it comes with many caveats. Often there is a gray area encompassing the line between features that do and do not truly limit the invention.  Thus, as the rule suggests, err on the side of open-ended language. But be mindful of instances where permissive language can hurt, and will not help. First, a reminder why the selection of an open-ended versus a limiting verb matters. It’s pretty simple. Open-ended or permissive verbs provide support for claim language without,… Read More »Patent Drafting Tip: Take Care with Open-Ended Descriptions

Prior Art is What an Internet Search Engine Sees

A decision holding that an a YouTube video is a printed publication under 35 U.S.C. § 102(a) is a reminder that one should always assume that content on the Internet accessible via a public search engine qualifies as prior art.  HVLPO2, LLC v. Oxygen Frog, LLC, No. 4:16cv336-MW/CAS (N.D. Fla. May 28, 2018).  In this case, the video in question would have been found in the top twenty results produced by a search of YouTube for “oxygen concentrator system.”  Citing Blue Calypso, LLC v. Groupon, Inc. (Fed. Cir. 2016), the court thought that “[s]urely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the “reasonable diligence” that the law expects of a hypothetical prior-art subject.” In other words, just like if you got yourself a bone with some meat on it, baby, you got a stew going, if you have Internet content that can be found by searching on a public website, then you’ve got some prior art going.

Battery Charging Apparatus Held Patent Ineligible

N. District Court of California grants Apple’s 12(c) motion for judgment on the pleadings (following full briefing and oral argument) finding claims of U.S. Pat. No. 6,661,203 ineligible under 35 U.S.C. § 101 based on broad functional claim language that does not recite how to achieve the claimed process beyond what is known in the admitted prior art. Uniloc USA, Inc. v. Apple, Inc., Civil No. C 18-00358 WHA (N.D. Cal. May 18, 2018). Uniloc (Uniloc USA and Uniloc Luxembourg) sued Apple for infringement of its battery charging and discharging system.  The court considered the following apparatus and method claims in its analysis (although, it was disputed as to whether these claims were representative): An apparatus for exercising a battery, comprising     a charging circuit having a charging current output coupled to the battery;     a temperature sensor positioned to sense a temperature related to the battery temperature;     a discharging circuit having a discharging current input coupled to the battery; and     a controller coupled to said temperature sensor, said charging circuit, and said discharging circuit, said controller operable to set said charging current in accordance with said temperature, and operable to set said discharging current in accordance with… Read More »Battery Charging Apparatus Held Patent Ineligible

Reversal of Parts Not Obvious in the Absence of Supporting Evidence

The ex parte Appellant successfully argued that the Examiner had not established a prima facie case of obviousness by failing to adequately explain why one skilled in the art would have made the proposed modification in Ex parte Tisol (Appeal No. 2017-007929, decided April 25, 2018). The claim at issue is reproduced below with emphasis added: A system for manufacturing a two-part fastener, the system comprising: a fastener-molding housing including a fastener mold having a first mold section connected to a second mold section through a flash connection mold section, wherein the fastener mold is configured to receive fastener-forming material to form a pre-engaged fastener having a first fastener portion within the first mold section and a second fastener portion within the second mold section, wherein the first fastener portion is temporarily secured to the second fastener portion through a flash connection portion formed within the flash connection mold section; and an actuating assembly including a stripper plate, a connecting member having a distal beam within a retaining sleeve that is moveably secured to the stripper plate, and at least one ejection member, wherein the connecting member is configured to securely retain the first fastener portion, wherein the stripper plate… Read More »Reversal of Parts Not Obvious in the Absence of Supporting Evidence