Posted on

Prior Art Anticipates Claims because “A” means “One or More”

The Central District of California held that claims directed to “‘an induction actuated container which is capable of automatically opening when a user is approaching, and automatically closing when the user has left’” are invalid because they are anticipated by prior art. Nine Stars Group (U.S.A.), Inc. v. Factory Direct Wholesale, LLC, No. 18-6471 PSG (PJWx) (C.D.Cal. Apr. 6, 2020) (patents-in-suit are U.S. Patent Nos. 7,911,169 and 8,129,930). A representative claim from the ‘169 patent is reproduced here: 1. An induction actuated container cover for a container body having a storage cavity and a container opening at an upper portion of said container body, wherein said induction actuated container cover comprises:  a control housing, having a cover opening, adapted for mounting at said container body at said container opening thereof to communicate said cover opening with said receiving cavity of said container body; a cover panel pivotally mounted to said…

Read more

Posted on

CAFC: Obviousness and Design Patents: Spigen Korea Co., LTD. v. Ultraproof, Inc.

The Federal Circuit, in reversing a court’s decision to grant summary judgment of invalidity of claims of three design patents, held that the identification of multiple differences between the claimed design and a cited reference created a factual issue as to “whether [the cited reference] is a proper primary reference” to support an obviousness inquiry for design patents. Spigen Korea Co., LTD. v. Ultraproof, Inc., 2019-1435 (Fed. Cir. Apr. 17, 2020) (patents-in-suit are U.S. Design Patent Nos. D771,607; D775,620; and D776,648). This was a precedential opinion authored by Judge Reyna and joined by Judge Newman. Judge Lourie dissented without opinion. The court first noted that “[s]ummary judgment of obviousness is appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these…

Read more

Posted on

Anticipation of Software Patent Claims: Arguments Must Be Consistent with Court’s Claim Construction

In a decision instructive on patent claim interpretation and anticipation analysis in software cases, claims directed to “computerized fitness equipment” that “simulates… actual race conditions with other users” were held invalid because as anticipated by prior art. VR Optics, LLC v. Peloton Interactive, Inc, No. 16-cv-6392 (JPO) (S.D.N.Y. Apr. 2, 2020) (patent-in-suit is U.S. Patent No. 6,902,513). The court noted that “[a]nticipation requires ‘that a single prior art reference disclose each and every limitation of the claimed invention, either expressly or inherently.’” SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1306 (Fed. Cir. 2019). Peloton identified U.S. Patent No. 6,997,852 as a single prior art reference and there was “no dispute that the [‘852] patent discloses all of the independent claims’ limitations, save one.” The disputed independent claim limitation is reproduced here: logic configured to drive the display in response to both the first and second performance parameters,…

Read more

Posted on

Court Overturns § 102 Rejection Due to Limiting Preamble

The Federal Circuit overturned a PTAB decision affirming anticipation rejections under 35 U.S.C. § 102 of patent claims directed to “the construction of travel trailers” because the the PTAB “erred in concluding [the preamble] does not limit the scope of the claims.” In Re: Fought et al., No. 2019-1127 (Fed. Cir. 2019) (See U.S. Patent Application PG-Pub. No. 2014/0008932). The court held the preamble is limiting because “it serves as antecedent basis for a term appearing in the body of a claim.” The court noted that although the “claim[s] do[] not use the typical claim language (comprising) which denotes the transition between the preamble and the body, the word ‘having’ performs the same role here.” Claims 1 and 2 are reproduced here: A travel trailer having a first and second compartment therein separated by a wall assembly which is movable so as to alter the relative dimensions of the first…

Read more

Posted on

Court Denies Motion to Reconsider Summary Judgment to Not Invalidate Under On-Sale Bar

Having previously denied summary judgment of invalidity of the plaintiff’s design patent, D450,839, under the 35 U.S.C. § 102 on-sale bar, the court in Junker v. Medical Components, Inc., et al., No. 2-13-cv-04606 (E.D. Pa Oct. 8, 2019), has denied a request for reconsideration that communications between plaintiff and a prospective buyer were not a legal offer for sale. Along the way, the court demonstrated that there can be some flexibility in applying the law governing what is an “offer for sale” under § 102. The court had denied defendant’s motion for summary judgment of invalidity, holding, based on the Restatement of Contracts, that communications between the plaintiff and a prospective buyer were preliminary negotiations and “did not trigger the on-sale bar” due to “the lack of a definite quantity term and delivery time” in the communications and “language that…establish[ed] an invitation to further negotiations.” The Defendants sought reconsideration, arguing…

Read more