Tyson Benson

Use of Passive Voice Insufficient to Connote Structure in MPF Analysis

The District Court for the Northern District of California recently issued a claim construction order in Zoho Corporation v. Sentius International, LLC, finding that the claim limitation “means for compiling the source material image from at least the plurality of discrete pieces” was indefinite.  The present action arose from a declaratory judgement action brought about by Zoho alleging that it did not infringe Reissued Patent No. RE43,633.  While both parties agreed that 35 U.S.C. ¶ 6 (means-plus-function) applied, the parties diverged on the question of whether the specification disclosed sufficient structure for the compile function.  During a means-plus-function analysis, the court engages in a two-step inquiry to construe the claim limitations at issue as set forth in Williamson v. Citrix Online, LLC.  First, the court identifies the claimed function, and, second, the court determines “what structure, if any, disclosed in the specification corresponds to the claimed function.”  The Federal Circuit, in Noah Sys., Inc. v. Intuit, Inc., has stated that a structure corresponds to the claimed function if “the specification or the prosecution history clearly links or associates the structure to the function recited in the claim.”  In its proposed claim construction, the Patent Owner, Sentius, alleged that the corresponding… Read More »Use of Passive Voice Insufficient to Connote Structure in MPF Analysis

Willful Infringement Allegations Require More Than Conclusory Statements

In a recent decision from the United States District Court for the District of Nevada, the court granted a motion to dismiss willful infringement allegations for lacking plausible factual allegations. IP Power v. Westfield , No. 2:19-cv-01878-MMD-NJK (D. Nev. June 4, 2020). This case centers around U.S. Patent No. 6,817,671, which is directed to a collapsible, reclining camp chair with a footrest and cupholders.  The plaintiff sued the defendant after multiple correspondences were exchanged between the parties.  In its complaint alleging patent infringement, the plaintiff also asserted that the defendant engaged in conduct rising to the level of willful infringement.  The defendant filed a motion to dismiss the willful infringement allegations, and the defendant’s argument centered on a single paragraph in the complaint.  That paragraph recited that: In addition, it is believed that [defendant] knew of the 671 Patent and/or licensed products before [defendant] developed its Accused Instrumentalities and copied the patented features from the 671 Patent and/or licensed patented products into the Accused Instrumentalities. Furthermore, [defendant] had actual or constructive knowledge of the 671 Patent and its infringement prior to the filing of this Complaint. At least as of March 22, 2019, [plaintiff] informed [defendant] that [defendant]’s Reclining Camp… Read More »Willful Infringement Allegations Require More Than Conclusory Statements

Federal Claims Court Finds Prosecution History Estoppel in Allowable Dependent Claims

In the recent decision of IRIS Corporation Berhad v. United States of America, the United States Court of Federal Claims had the opportunity to evaluate the Doctrine of Equivalents (DOE) in view of applicant actions during prosecution. More specifically, this case centered around the applicant’s actions of incorporating dependent claim material into an independent claim and whether those actions led to prosecution history estoppel. This case arose when IRIS sued the United States Department of State for patent infringement by its manufacture and importation of certain electronic passports. The patent at issue, U.S. Patent No. 6,111,506 (“the ‘506 Patent”), was directed to a method of making an identification document. Claim 1, the only independent claim in the ‘506 Patent, recited: A method of making an identification document comprising the steps of: forming a contactless communication insert unit by electrically connecting an integrated circuit including a microprocessor, a controller, a memory unit, a radio frequency input/output device and an antenna, and disposing a metal ring to surround the integrated circuit;  disposing the contactless communication insert unit on a substrate and laminating it to form a laminated substrate; supplying a first sheet of base material; supplying a second sheet of base material;… Read More »Federal Claims Court Finds Prosecution History Estoppel in Allowable Dependent Claims

Federal Circuit Finds Fault in PTAB’s Determination of Obviousness Without Proper Notice

In Nike v. Adidas (Fed. Cir. April 9, 2020) (precedential), the Federal Circuit addressed the notice provisions of the Administrative Procedures Act (APA) as they relate to the Patent Trial and Appeals Board (PTAB or Board) determination in an inter partes review (IPR) proceeding. Specifically, this precedential decision held that notice is required when the PTAB advances a novel theory of unpatentability. Originally, Adidas filed a petition for inter partes review of a patent owned by Nike. After the petition was granted, Nike filed a motion to amend requesting cancellation of a number of claims and entry of substitute claims. This decision centered around dependent claim 49, which recited, in part, “second stitch configuration forms a plurality of apertures in the flat knit textile element, the apertures formed by omitting stitches in the flat knit textile element and positioned in the upper for receiving laces.” In determining that claim 49 was unpatentable as obvious, the Board reasoned that “the entirety of the record demonstrates the unpatentability of substitute claim 49 by a preponderance of the evidence.” The Board’s conclusion was based on a theory that was not originally presented within the original petition or petitioner’s filings opposing the substitute claims… Read More »Federal Circuit Finds Fault in PTAB’s Determination of Obviousness Without Proper Notice

A Printed Publication in Patent Prosecution May Not be Printed Publication in an IPR Proceeding

In a recently designated precedential decision (Ex parte Grillo-Lopez), the Patent Trial and Appeal Board (PTAB) explained the differences regarding what a printed publication is during inter partes review (IPR) and what a printed publication is during examination.     This decision centered on an FDA transcript that was the subject of an earlier IPR proceeding in which the PTAB held that the FDA transcript was not shown to have been a printed publication. To provide additional context, the FDA transcript was cited as prior art by a petitioner in the earlier IPR proceeding. The PTAB found that the petitioner did not provide adequate evidence that the FDA transcript was a prior art printed publication. More specifically, the PTAB explained that the Petitioner did not explain “how such persons may have known that the FDA transcript existed and was available, upon request, in the DDM Public Reading Room.” In other words, the Petitioner held the initial burden to show that the FDA transcript was a prior art printed publication in the IPR petition. In contrast to being cited in an IPR petition, the FDA transcript was cited by a Patent Examiner during prosecution of a patent application. As explained in the decision,… Read More »A Printed Publication in Patent Prosecution May Not be Printed Publication in an IPR Proceeding

Federal Circuit Says No to PTAB’s IPR Joinder Approach

In a highly anticipated Patent Trial and Appeal Board (PTAB) decision, the Federal Circuit ruled that the PTAB erred in allowing Facebook to join itself to a PTAB proceeding in which it was already a party. This decision focused on the interpretation of 35 U.S.C. § 315(c), which relates to the Patent Office’s ability to join a party in an inter partes review (IPR) proceeding. More specifically, the statute states: (c) Joinder.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. The Patent Office filed a brief with the Federal Circuit in September 2019 urging the Federal Circuit to accept the PTAB’s Precedential Opinion Panel’s (POP) as long as the POP’s interpretation was reasonable. More specifically, the Patent Office argued that its precedential panel opinions interpreting the America Invents Act (AIA) were entitled to Chevron deference (the particular POP decision… Read More »Federal Circuit Says No to PTAB’s IPR Joinder Approach

“Protocol Module” Deemed Indefinite for Lack of Structure

The District Court for the Northern District of California recently handed down a claim construction order in Microchip Technology Incorporated v. Nuvoton Technology that held the claim limitation “protocol module” was indefinite under 35 U.S.C. § 112, ¶2.  Both parties agreed that the term “protocol module” was subject to interpretation under 35 U.S.C. § 112, ¶6 (means-plus-function).  However, the defendant argued that the specification did not disclose any structure for performing the claimed function “providing configuration data for one of two or more serial communication protocols based on the protocol selection.”  Claim 1, which was deemed representative, recited: A system comprising: an interface module including a buffer or register for storing a protocol selection; a protocol module coupled to the interface module and configured for providing configuration data for one of two or more serial communication protocols based on the protocol selection; a serial engine module coupled to the interface module and the protocol module, the serial engine module configured for:           determining from the protocol selection that data or commands are to be transmitted and received on a serial communication bus using synchronous communication;           determining that a port control module coupled to the serial communication bus is configured… Read More »“Protocol Module” Deemed Indefinite for Lack of Structure

“Virtual Client Entity” Deemed Indefinite By District Court Under MPF Analysis

The District Court for the District of Delaware recently handed down a claim construction order in T-JAT Systems 2006 v. Expedia that held the claim limitation “virtual client entity” was indefinite under 35 U.S.C. § 112, ¶2. The court concluded that the claim limitation was indefinite after determining that “virtual client entity” should be interpreted as invoking 35 U.S.C. § 112, ¶6 (means-plus-function) and then ascertaining that the specification failed to provide sufficient structure for “virtual client entity.” Claim 1, which was deemed representative, recited: A method for providing a user of a telephone device with a capability to use Internet-based applications, which method comprises the steps of: transmitting from said telephone device an indication towards a first server, denoting a request to be connected to an Internet-based application residing at a second server; providing said user with a menu from which the user selects a requested Internetbased application; after selecting an application, establishing a communication path that extends between said telephone device and said second server via said first server; at said first server, creating a virtual client entity specific to said telephone device and said Internet-based application to be used, created specifically to allow communication between said telephone… Read More »“Virtual Client Entity” Deemed Indefinite By District Court Under MPF Analysis

District Court Finds Amazon Lockers Qualify as a Regular and Established Place of Business

Introduction Recently, in Rensselaer Polytechnic Institute et al v. Amazon.com, Inc., a district court weighed in on whether Amazon’s lockers constituted “a regular and established place of business” for the purposes of determining whether venue was proper. Amazon was sued for patent infringement in the Northern District of New York. In response, Amazon argued that venue was improper under 28 U.S.C. § 1400(b) because Amazon contended it had no regular/established place of business within the district. In patent infringement cases, venue is proper in the district (1) “where the defendant resides” or (2) “where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b). This decision focuses on the second prong of § 1400(b) to determine whether Amazon has a regular and established place of business based on Amazon lockers located within the district. Using the three-part test established in In re Cray by the Federal Circuit, the court determined that the Amazon lockers established a regular and established place of business within the district. The three-part test sets forth that the place of business must be “(1) ‘a physical place in the district’ from which the defendant ‘actually engage[s]… Read More »District Court Finds Amazon Lockers Qualify as a Regular and Established Place of Business