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35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The ‘798 patent includes system claims, and the ‘725 and ‘751 patents include method claims. It was important in this case that infringement of the various system and method claims have different requirements to qualify for pre-suit damages. Pre-suit damages for the system claims are controlled by the marking requirements of 35 U.S.C. § 287(a), whereas pre-suit damages for the method claims are not. With respect to the method claims of the ‘725 and ‘751 patents, Packet Intelligence argued that evidence of direct infringement of the ‘725 and ‘751 patents was…

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An Inventor Must Be a Natural Person, Not a Machine

The Bicentennial Man is out of luck.* The Patent Office recently issued a ruling that only a human can be an inventor. The application at issue listed “DABUS” as the sole inventor. DABUS is a collection of neural nets designed as a “creativity machine” by Stephen Thaler, who is also the assignee of the application. The application was filed with the help of a team to serve as a test case for categorizing machines as inventors. The team filed the application not only with the United States Patent and Trademark Office but also with the European Patent Office and the United Kingdom Patent Office. The EPO and the UKIPO both rejected the application by stating that an inventor must be human. The USPTO followed suit, also ruling that an inventor must be a natural person. The ruling starts with the language of Title 35, the part of the U.S. Code…

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Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding

In William Grecia v. Samsung Electronics (Fed. Cir. 2019) the Federal Circuit affirmed a finding of invalidity for U.S. Patent 8,533,860 (the ‘860 patent) under 35 U.S.C. § 112, ¶2 (indefinite). The invalidly determination for the ‘860 patent was arrived at by the Court after a means-plus-analysis and invocation of 35 U.S.C. § 112, ¶6. Claim 21, the only claim at issue, recites: 21. A computer product comprising a memory, a CPU, a communications console and a non-transitory computer usable medium, the computer usable medium having an operating system stored therein, the computer product further comprising a customization module, the computer product authorizing access to digital content, wherein the digital content is at least one of an application, a video, or a video game, wherein the digital content is at least one of encrypted or not encrypted, the computer product configured to perform the steps of: receiving a digital content…

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Written Description Required to Claim Priority from a PCT

The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir. Mar. 14, 2018) the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision finding that an earlier-filed PCT application (Publication No. WO 99/11184) provided sufficient written description to qualify as a priority document for U.S. Patent No. 8,061,359 under 35 U.S.C. §§ 112 and 120. The ‘359 patent is directed to an endoscope and is owned by Appellee Smith. The ‘359 patent issued from a divisional application of the national stage of the ‘184 PCT. The specification of ‘359 patent as originally filed and the ‘184 PCT application were nearly identical. The claims in the ‘359 patent recite a “light guide.” During prosecution of the ‘359 patent the Examiner objected to…

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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…

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