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 sufficient to merit an award of damages for pre-suit activities. Direct infringement would require the method of the patent claims to actually be practiced, i.e., the steps of method actually performed. However, NetScout’s primary activity was to sell and license software, and, as the Federal Circuit pointed out, method claims… Read More »35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

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 pertaining to patents. The statute provides this definition: “The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” 35 U.S.C. § 100(f). In finding that the statutes treat inventors as necessarily human, the PTO relied on… Read More »An Inventor Must Be a Natural Person, Not a Machine

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 access request from the communications console, the access request being a read or write request of metadata of the digital content, the metadata of the digital content being one or more of a database or storage in connection to the computer product, the request comprising a verification token corresponding to… Read More »Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding

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 the drawings for failing to show the light guide. The specification was then amended during prosecution to state “[a] connection 8 for a light source is also present, for connection to a light guide, such as a fibre optics bundle which provides for lighting at the end of lens 13.”… Read More »Written Description Required to Claim Priority from a PCT

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

Take Care with Patent Assignment Language

Written agreements discussing an employee’s obligation to patent assignment rights were insufficient to actually assign ownership in U.S .Patent No. 5,781,788, a divided Federal Circuit panel has held. Advanced Video Technologies LLC v. HTC Corp., Nos 2016-2309, 2016-2310, 2016-2311 (Fed. Cir. Jan 11, 2018) (precedential) (opinion by Judge Reyna, Judge O’Malley concurring and Judge Newman dissenting). Despite the panel’s disagreements about the law, this case provides a reminder that it is important to obtain a present and not just a future promise to assign patent rights, e.g., “I hereby do assign” and not just “I will assign.” Of the three inventors on the ’788 patent, two of them had assigned their interests to Advanced Video, but the third, Vivian Hsiun, had declined. The patent had a complicated chain of title, being part of assets that were seized as part of a security agreement, sold back to another one of the co-inventors, who then assigned his ownership interest to a predecessor of Advanced Video. That predecessor filed the application for the ’788 patent with the USPTO, and prosecuted the patent application without Ms. Hsiun’s cooperation, she having refused to assign her interest, upon providing a declaration representing to the USPTO that… Read More »Take Care with Patent Assignment Language

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?

Effect of Assigning a Provisional Patent Application?

An assignment of “all inventions and improvements disclosed and described in said provisional application” was effective against later non-provisional applications claiming priority to the provisional application so long as there was no new matter.  Separation Design Group LLP Holdings, LLC v. Inogen, Inc., No. LA CV15-08323 JAK (JPRx) (C.D. Cal. June 1, 2017). The question of the effect of assigning the provisional application arose because the assignors in the contract at issue agreed “to sell, assign, transfer, and convey, and hereby do sell, assign, transfer, and convey” the provisional application.  There was also a clause covering possible future non-provisional applications, but that clause lacked the magic words “hereby do sell” to effect the future assignment. No matter, said the court: “it is logical that an assignment of all inventions disclosed in a provisional application is sufficient to transfer the entire chain of applications and patents that follow.”  Further, the patent here satisfied “[t]he only limitation, which . . . is that the patents not present any new matter.” Further, the inventors who had assigned their rights to the assignor in the above agreement had  executed employment agreements with the magic agreement to “hereby assign” rights arising during their employment.  Therefore,… Read More »Effect of Assigning a Provisional Patent Application?

Volitional Conduct: an Element of Copyright Infringement

The Ninth Circuit Court of Appeals recently held in Perfect 10 v. Giganews, No 15-5550 (Jan 23, 2017), that an alleged copyright infringer can only be found directly liable if its “volitional conduct” actually causes the infringing activity to happen. Notably, the Court rejected Appellant’s argument that the Supreme Court’s ruling in American Broadcasting v. Aereo, Inc. removed this “volitional conduct” requirement. Appellant Perfect 10, Inc. owns copyrights to several images. Appellee Giganews, Inc. owns and operates several Usenet servers and provides subscribers to user-stored content to other Usenet providers. Perfect 10’s images have been distributed by users over Giganews’s servers, and Perfect 10 sued Giganews for direct and indirect copyright infringement claims. The district court granted Giganews’s motions for summary judgment as to the direct and indirect copyright infringement claims. The Court reviewed the grant of summary judgment de novo. To show a prima facie case of direct copyright infringement, Perfect 10 had to show “ownership of the allegedly infringed material” and “demonstrate that the alleged infringers violated at least one exclusive right” granted to copyright holders. Furthermore, direct infringement requires that Perfect 10 show causation, referred to as “volitional conduct,” by Giganews. In the context of copyright infringement,… Read More »Volitional Conduct: an Element of Copyright Infringement

Exciting Technology (and new Intellectual Property?) at the 2016 North American International Auto Show

We saw a lot of interesting technology – and, who knows, maybe some new intellectual property – at this year’s North American International Auto Show, the annual gathering of the automotive industry at Cobo Hall in downtown Detroit, a short distance from our office. As intellectual property attorneys we are always interested in new technology, so we thought we would share a brief tour of the exciting high tech developments we saw at the 2016 Auto Show. The Auto Show provides automakers a chance to talk to the public—ticketed attendance this year was 815,575, a twelve-year high. While automakers devoted considerable floor space to show off the upcoming 2017 models, they also sought to educate an often excited, sometimes skeptical public about major shifts in the industry, mainly electrification and automation. The most immediate step toward an electric future for vehicles, and one of the biggest stories coming out of the Auto Show, is GM’s Chevy Bolt. The Bolt, expected for the 2017 model year, will become the first mass-market vehicle that can travel more than 200 miles on a single charge. Chevy made the Bolt a centerpiece of its display, perching an orange model on a rotating stand with a… Read More »Exciting Technology (and new Intellectual Property?) at the 2016 North American International Auto Show