Kevin Hinman

Broadest Reasonable Interpretation Has Limits

The United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) recently put the United States Patent Trial and Appeal Board (“the Board”) on notice that the broadest reasonable interpretation of claims (“BRI”) is not without limits. U.S. Patent No. 6,249,876 (“the ‘876 patent”), owned by the Power Integrations, Inc. (“Power Integrations”), had its claims 1, 17, 18 and 19 rejected in an ex parte reexamination that was appealed to the Board. The Board, relying on an interpretation allowing additional elements to be disposed between “coupled” elements, supported the examiner’s rejection of the claims as anticipated under pre-AIA 35 U.S.C. §102(b). The Federal Circuit reversed the Board’s decision, labeling the claim construction as “unreasonably broad.” IN RE: POWER INTEGATIONS, INC. (Appellant), 2017-1304 (March 19, 2018). Claim 1 is set forth below to show its use of “coupled”: A digital frequency jittering circuit for varying the switching frequency of a power supply, comprising: an oscillator for generating a signal having a switching frequency, the oscillator having a control input for varying the switching frequency; a digital to analog converter coupled to the control input for varying the switching frequency; and a counter coupled to the output of the oscillator,… Read More »Broadest Reasonable Interpretation Has Limits

“Substantially” in a Patent Claim is Substantially OK

U.S. Patent No. 5,987,863 (“the ‘863 patent”), owned by the Exmark Manufacturing Company (“Exmark”), recently survived a challenge to its claim 1 as indefinite under 35 U.S.C. §112, ¶2 for inclusion of the phrase “elongated and substantially straight.”  The United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) affirmed a refusal by the United States District Court for the District of Nebraska to grant summary judgment on a motion alleging the invalidity of claim 1 of the ‘863 as indefinite under 35 U.S.C. §112, ¶2.  The motion was made by Briggs & Stratton Power Products Group, LLC’s (“Briggs & Stratton”) in an infringement action initiated by Exmark against Briggs & Stratton.  EXMARK MANUFACTURING COMPANY INC., Exmark Manufacturing Company Inc. (Plaintiff-Appelee) v. Briggs & Stratton Power Products Group, LLC (Defendant-Appellant), 2016-2197 (January 12, 2018). The Federal Circuit looked for evidence that claim 1 “. . . when read in the light of the specification, informs those skilled in the art of the scope of the ‘elongated and substantially straight‘ limitation with reasonable certainty.”  The Federal Circuit cited the Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014): “Pursuant to 35 U.S.C.… Read More »“Substantially” in a Patent Claim is Substantially OK

Is a fail on §101 always “exceptional” under §285?

The answer to the question posed by the title is no, the Federal Circuit’s recent decision in Inventor Holdings, LLC v. Bed Bath & Beyond Inc., No. 2016-2442 (Fed. Cir. Dec. 8 2017) notwithstanding (reported on by this blog in “Attorney Fees Awarded for Post-Alice Patent Litigation”).  Two recent district court patent cases in which the validity under 35 USC §101 of the asserted patents was in question yielded different results on the award of attorney fees under 35 USC § 285 (Opal Run LLC, Plaintiff v. C & A Marketing, Inc., Defendant, No. 2:16-CV-00024-JRG-RSP (Eastern District of Texas, Marshall Division) (November 29, 2017) (“Opal Run v. C&A”) and Product Association Technologies v. Clique Media Group, No. CV 17-5463-GW (PJWx), (Central District of California) (November 30, 2017) (“PAT v. Clique Media”)).  Both cases slightly predate the Federal Circuit’s Inventor Holdings decision.  In Inventor Holdings, the Federal Circuit cited the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) (“Octane Fitness”).  Octane Fitness grants courts much discretion in determining a §285 case as being “exceptional”: “. . . an ‘exceptional’ case is simply one that stands out from others with respect to… Read More »Is a fail on §101 always “exceptional” under §285?

Federal Circuit: No “Teaching Away” Without Discouragement

The University of Maryland Biotechnology Institute (“Maryland”), owner of U.S. Patent No. 6,673,532 B2 (“the ‘532 patent”), recently lost the ‘532 patent when the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) rejected Maryland’s argument that a cited reference is teaching away from combining it with another reference to reach a conclusion of obviousness.  The Federal Circuit affirmed a determination by the PTAB of obviousness of the claims in an interpartes reexamination of the ‘532 patent on 35 U.S.C. §103 grounds.  The reexamination was requested by Presens Precision Sensing GMBH (“Presens”), a seller of equipment that uses technology related to that in the ‘532 patent.   University of Maryland Biotechnology Institute v. Presens Precision Sensing GMBH, 2016-2745, 2017-1057 (November 3, 2017). The claim rejections relied on two technical papers, Bernhard H. Weigl et al., Optical Triple Sensor for Measuring pH, Oxygen and Carbon Dioxide, 32 J. Biotechnology 127 (1994) (“Weigl”), and Shabbir B. Bambot et al., Potential Applications of Lifetime-Based, Phase-Modulation Fluorimetry in Bioprocess and Clinical Monitoring, 13 Trends in Biotechnology 106 (1995) (“Bambot”).  The references were combined to reject claims including a limitation not expressly found in either reference: “at least two types of optical chemical… Read More »Federal Circuit: No “Teaching Away” Without Discouragement

PTAB: Filled May Be Indefinite, Unfilled Is Adequately Described

Tinnus Enterprises, LLC (“Tinnus”), owner of U.S. Patent No. 9,527,612 B2 (“the ‘612 patent”) recently suffered a setback when the U.S. Patent Trial and Appeal Board ordered institution of a post-grant review of the ‘612 patent on the ground of indefiniteness.   Responsive to a petition by Telebrands Corp. (“Telebrands”) for a post-grant review of the ‘612 patent on 35 U.S.C. §103 and 35 U.S.C. §112(a) and §112(b) grounds, the PTAB granted review of claim 3 for a determination of whether a “filled state”, as used in claim 3, is indefinite.  Interestingly, Telebrands’ request for review of the adequacy of the written description’s support of claim 3’s “unfilled state” was not granted, with the PTAB deciding it was adequately described.   Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2017-00015 (October 11, 2017).   35 U.S.C. §103 The PTAB firmly rejected the proposed §103 grounds, noting that all of the references asserted in the petition were considered during the prosecution of the ‘612 patent.       35 U.S.C. §112(a) Telebrands challenged the specification as not satisfying the requirement under §112(a) to provide an adequate written description of the invention of claim 3, especially the part reading: “at least first and second ones of the… Read More »PTAB: Filled May Be Indefinite, Unfilled Is Adequately Described

Inter Partes Review Estoppel Extends to Non-Petitioned Grounds

Hewlett Packard Enterprises (“HP”), accused of infringing U.S. Patent No. 6,218,930 owned by Network-1 Technologies, Inc. (“Network-1”), was recently estopped from relying on certain references and combinations thereof to support arguments of patent claim invalidity.  Magistrate Judge K. Nicole Mitchell recommended granting a motion for Summary Judgment that HP was estopped under 35 U.S.C. §315(e)(2) from asserting the obviousness of the disputed claims over non-petitioned grounds that Judge Mitchell believed HP reasonably could have raised during an earlier inter partes review (“IPR”). Network-1 Technologies, Inc. v. Alcatel-Lucent USA, Inc., et al., C.A. No. 6:11-cv-492-RWS-KNM (E.D. Texas September 26, 2017). Network-1 filed suit against HP and several other Defendants on September 15, 2011.  HP served Network-1 with Invalidity Contentions, challenging the asserted claims as obvious or anticipated by four patent references. HP also joined with several of the other Defendants in filing an inter partes review petition.  At the request of the Defendants, the infringement trial was stayed pending the outcome of the inter partes review.  The inter partes review petition cited four patent references with only one of HP’s Invalidity Contention references being included.  Responsive to the inter partes review petition, the PTAB granted review on two grounds:  1. anticipation by… Read More »Inter Partes Review Estoppel Extends to Non-Petitioned Grounds

Knowledge of Skilled Artisan Can Beat Patent Indefiniteness

Knowledge of a person of skill in the art was recently used to revive claims that had earlier been found indefinite under 35 U.S.C. § 112.  Delaware District Court Judge Leonard P. Stark granted a motion for reargument on the issue of patent indefiniteness after considering evidence of a person skilled in the art.  Judge Stark held there to be a factual dispute regarding the knowledge that a person of skill in the art would bring to bear when testing for features claimed in US Patent Nos. 7,774,911 and 8,176,613.  The factual dispute determination precluded a conclusion, until the dispute is resolved, that it has been proven by clear and convincing evidence that the claims are invalid.  American Axle & Manufacturing, Inc. v. Neapco Holdings LLC and Neapco Drivelines LLC, C.A. No. 15-1168-LPS (D. Del. September 6, 2017). US Patent Nos. 7,774,911 and 8,176,613 were asserted by American Axle & Manufacturing, Inc. (“AAM”) against Neapco Holdings LLC and Neapco Drivelines LLC (“Neapco”).  Claims of each of the patents include the step of positioning a liner within a driveline shaft member to: damp shell mode vibrations by at least 2%; and damp bending mode vibration in the shaft, with the liner… Read More »Knowledge of Skilled Artisan Can Beat Patent Indefiniteness

Contingent Patent Assignee Has Standing to Assert Patent

A patent assignee was found to have standing to assert a patent assigned to it, even though the patent assignor retained both a conditional right to mandate a return assignment, and to receive 50% of any enforcement proceeds.  In spite of the rights retained by the assignor, District Judge Nancy C. Atlas held the patent assignee, Hailo Technologies, LLC (“Hailo”), to be the owner by assignment of U.S. Patent No. 6,756,913 (“the Patent”), and to have standing to sue for infringement of the Patent.  Hailo Technologies, LLC v. MtData, LLC, 4-17-cv-00077 (S.D. Texas July 21, 2017). Factors considered by the court included the rights assigned to Hailo, and the rights retained by the inventor/assignor, Mourad Ben Ayed (“Ayed”), relative to the requirements of the statute, 35 U.S.C. §§261, 281.  Section 281 grants patentees remedy by civil action for infringement of their patent.  Section 261 allows the patentee to convey an exclusive right under his patents, to the whole or any specified part of the United States.  An assignee is unambiguously granted the right to assert a patent, i.e., the right to sue, when all of the rights under the patent are assigned to the assignee, and none retained by the… Read More »Contingent Patent Assignee Has Standing to Assert Patent

Federal Circuit Revisits Secondary Considerations and Effect of Age of Cited References under Section 103

The Federal Circuit recently clarified the suitability of certain types of evidence in analyses of patentability under section 103. Nike, Inc. v. Adidas AG, No. 2014-1719 (Fed. Cir. February 11, 2016) (opinion by Judge Chen, joined by Judges Mayer and Stoll). One question was: must evidence of secondary considerations be considered by the United States Patent and Trademark Office (“USPTO”)? Another question was: can the age of cited references can be independent evidence of a lack of motivation to combine references? Quick answers: yes and no, respectively. BACKGROUND: The case arose from an inter partes review (“IPR”) petition filed by Adidas challenging claims of a Nike patent (US 7347011) relating to (of course) footwear. In the proceedings in the USPTO, Nike requested both cancellation of claims 1-46 and acceptance of proposed new claims 47-50. The USPTO Patent Trial and Appeal Board (“PTAB”) canceled claims 1-46, but denied Nike’s motion to substitute claims 47-50. The PTAB denied entry of the claims on the basis that Nike had not established that the substitute claims were patentable over the cited prior art patents, Nishida (US 5345638,  issued September 13, 1994), Schuessler I (US 2178941, issued November 7, 1939), and Schuessler II (US 2150730,… Read More »Federal Circuit Revisits Secondary Considerations and Effect of Age of Cited References under Section 103