Patently-O Bits and Bytes No. 3

  • Patent Prosecution Highway Pilot Program extends to include Canada, Korea, Japan, and Hong Kong. Under the program, allowed US claims can receive “accelerated examination” in the other patent offices. Likewise, cases seeking claims first allowed in the other countries will be “made special” in the US. (MPEP 708.02(a) procedures for a petition to make special do not apply here). [LINK]. [via “C’est é-p@tent!”]
  • Outside the Box v. Travel Caddy: In an non-precedential opinion, CAFC judges disagreed on the meaning of the claim term “between.” The majority (Archer & Bryson) held that the term “between” limited the location of a panel only to an area within two end points.  In dissent, Judge Dyk argued that the open claim transition “comprising” should be interpreted to allow infringement even if the panel extends beyind the end points. [LINK]
  • Quanta: Today, the Supreme Court is hearing Oral Arguments in the Quanta case. Three Supreme Court / IP veterans are handling the oral arguments: Maureen Mahoney (Quanta); Thomas Hungar (DOJ); Carter Phillips (LGE, patentee).
  • ACPC Conference: In-house patent counsel may enjoy the upcoming ACPC meeting in Santa Barbara, Jan 27–30. [Link]

15 thoughts on “Patently-O Bits and Bytes No. 3

  1. Holy resurrection, Batman!

    Question about the Patent Prosecution Highway: has anyone actually used it or even looked into it? I typically take cases national into several other countries, and my company has foreign inventors/offices that would permit us to file in those countries v. the US.

    Looking at the USA-AU PPH, it appears a priority claim to a US application kills one’s chances of doing anything if the AU application reaches allowance first.

    The larger question to me is what benefit, if any, the “fast track” request offers. Will the USPTO actually defer at all to the work of the other country’s office, or just use the new references to make a new rejection?

  2. “but that the “2 to 3 cm” limitation in 2), and the 3 limitation in 3), could not be got around (since otherwise you would render those claim limitations meaningless).”

    I agree with the first statement, but not the second. The CAFC decision of a couple of years ago comes to mind, dealing with the patent on 3 razor blades as it applied to the product with 4 razor blades. If I recall it correctly, the district court did not find infringement (i.e. 3 met only 3), but the CAFC did, because to have 4, you had to have 3, which met the limitation.

  3. J. Dyks’s disset has merit, but IMO, he is wrong to hang it under on the “comprising” peg.

    I thought that it was settled law that in the following claim structure:

    “A widget comprising:
    1) an X;
    2) a Y of from 2 and 3 cm in length; and
    3) 3 Zs.”

    that the openness of “comprising” means that in addition to 1),2), and 3), there could be other items 4), 5), and 6), and that the an of 1) and the a of 2) both mean mean “1 or more”, but that the “2 to 3 cm” limitation in 2), and the 3 limitation in 3), could not be got around (since otherwise you would render those claim limitations meaningless).

    Cheers, Luke

  4. Anonymous:

    Both. Petitioner, DOJ supporting petitioner, and Respondent each became repeatedly tongue tied. This in some instances was of their own making, but in other instances resulted from questions presented from the bench.

    I did smile when I noted one of the justices ask about things that replicate…like seeds. Guess he must have had McFarling in mind.

  5. “Trust me, you will wince repeatedly as you read it. One thought that ran through my mind as I read it was why no one bothered to mention that LG’s patents did not cover Intel’s products. Still another was why no one mentioned that the alleged infringers always had the option to combine Intel’s products with the alleged infringers’ products in a non-infringing manner.”

    wince at the advocates or the justices?

    D

  6. EG,

    Trust me, you will wince repeatedly as you read it. One thought that ran through my mind as I read it was why no one bothered to mention that LG’s patents did not cover Intel’s products. Still another was why no one mentioned that the alleged infringers always had the option to combine Intel’s products with the alleged infringers’ products in a non-infringing manner.

    The more I read arguments by persons who are not experts in Title 35 the more disheartened I become that problematic court decisions will continue to be the rule.

  7. Outside the Box v. Travel Caddy… it’s funny, because the company is called “Outside the Box” and the District Court won’t let their between claims extend to stuff ‘outside the box’.

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