2004

Poster Presentation at Conferences Constitutes 102(b) Printed Publication

Patent, Patent Cases 2004,

In re Klopfenstein and Brent (Fed. Cir. 2004) (three day poster presentation at academic conference without any paper distribution or indexing was a printed publication under 102(b)).

More than one year prior to filing their application, the inventors of a new method of peparing foods using extruded soy fiber presented a poster presentation at two academic conferences (for a total of less than 3 days).  No copies of the presentation were distributed.  The Patent Examine rejected the claims as anticipated by the prior publication.  The applicants did not dispute that the presentation fully disclosed the invention.  Rather applicants argued that the presentation was not a prior art publication under 35 USC 102(b).

The only question in this appeal is whether the Liu reference constitutes a “printed publication” for the purposes of 35 U.S.C. § 102(b).  As there are no factual disputes between the parties in this appeal, the legal issue of whether the Liu reference is a “printed publication” will be reviewed de novo.

The Appellate Panel affirmed the rejection holding that  distribution or indexing is not required of printed publications. 

The reference itself was shown … to members of the public having ordinary skill … Those members of the public were not precluded from taking notes or even photographs of the reference.  And the reference itself was presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed-particularly given the amount of time they had to copy the information and the lack of any restrictions on their copying of the information.  For these reasons, we conclude that the Liu reference was made sufficiently publicly accessible to count as a “printed publication” under § 102(b).

New Electronic Filing and Authoring Software

Patent

The USPTO has announced improvements to its Patent Electronic Filing System (EFS).  Beginning Sunday, August 22, 2004 the Office will make available EFS-ABX version 1.1 and ePAVE version 5.1d. 

EFS-ABX is the new authoring tool used to create patent application specifications. EFS-ABX allows users to develop a patent application completely in Microsoft® Word which greatly improves the workflow of creating a patent specification over current authoring tools.

Electronic Filing Software can be Downloaded here :  <http://www.uspto.gov/ebc/efs/index.html>.

Federal Circuit: Fisher-Price v. Safety 1st

Patent, Patent Cases 2004

Fisher Price

Fisher-Price v. Safety 1st (Fed. Cir. 2004) (not citable as precedent)

Fisher-Price is the assignee of several patents on baby items, such as carriers, strollers and bassinets.  (e.g., U.S. Patent No. 6,274,755).  Fisher-Price sued Safety 1st for infringement and won a jury trial.  The district court denied Safety 1st’s JMOL motion on validity, infringement, and the period of damage recovery.  Safety 1st appealed.

The Federal Circuit affirmed, finding that the patents were valid and infringed.  Ironically, the only modification to the district court’s order was to expand the scope of damages in Fisher-Price’s favor.

Frivolous arguments over FJC patent video

Patent, Patent Cases 2004

Just a snippet of this case out of Iowa: Engineered Products v. Donaldson Co. (N.D. Iowa 2004)

Donaldson was found liable for infringement of Engineered Product’s patent on a mechanical air filter. (U.S. Patent No. 4,445,456).  In a post trial argument, Donaldson’s attorneys argued that the patent law videotape prepared by the Federal Judicial Center, which was intended to provide potential jurors with an introduction to patent law should not have been shown during jury selection.  The judge was not happy with this argument:

While the undersigned has been restrained in his ten years as a federal district court judge about characterizing any party’s argument as “frivolous,” Donaldson’s argument concerning use of the videotape is one of the rare ones for which the undersigned can find no other characterization. Zealous representation at times requires judicious determination of which arguments are worth advancing or preserving, and which are not, or the credibility of even meritorious arguments may be called into question by the assertion of meritless ones.

Donaldson announced that it intends to “vigorously challenge the judgment and will appeal the decision to the Federal Circuit Court of Appeals.”  The appeal will likely be on other grounds.  The patent expired in 2001, but EPC was suing for past damages.

Glaxo Disclaims Allergy Patent

Articles and Publications, Patent

According to the USPTO Official Gazette, Glaxo Group has filed a disclaimer that dedicates its Patent No. 5,290,815 to the public.  The ‘815 patent involves a method of treating a late asthmatic reaction and reportedly covered the use of Advair Diskus and Serevent.  The patent was apparently de-listed from the Orange Book in 2003.

MPEP 1.321 provides for statutory disclaimers:

A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns.

Federal Circuit: Linear Technology v. Impala Linear and Maxim Integrated

Patent, Patent Cases 2004, ,

Linear Technologies Figure

Linear Technology v. Impala Linear and Maxim Integrated (Fed. Cir. 2004)

After losing an appeal last month, Maxim filed a request for an en banc rehearing.  Although the court denied the petition to rehear, it did issue a substitute opinion in the case.

Summary:

Because genuine issues of material fact have been raised concerning Maxim’s contributory infringement or inducement, we vacate the district court’s summary judgment of no contributory infringement or inducement of the current reversal method claims of the ’178 patent.  Because Maxim failed to raise a genuine issue of material fact, the matter of inventorship was amenable to determination on summary judgment on the undisputed factual premises.  On these premises, the district court correctly held that Vinsant was not a joint inventor of the ’178 patent.

As in the prior opinion,the court found error in the district court’s claim construction.  Vacated-in-part, affirmed-in-part, and remanded.

Read the original federal circuit opinion.

Online Inventor’s Forum

Inventors, Patent

The USPTO has released a transcript from its on-line chat.  Here are some Excerpts:

Inventor 
Can I use an invention promotion company to help me with my invention

USPTO Expert
Yes, however you should do a thorough search of what they offer including their costs and their success rate. Be sure and get references to ensure you are working with a reputable business. Also, registered patent practitioners are available to help you. For a list of questions to ask an invention promotion company go to our independent inventor link at our website.  http://www.uspto.gov/web/offices/com/iip/data.htm

Inventor
can drawings be revised after the original non-provisional application?

USPTO Expert
Drawings can be revised as long as no new matter (additional information supported by the original specification) is added by the revision. Revision of drawings is accomplished by filing replacement drawings.

Inventor
Is there a difference in preference/priority between individual patent applicants verses corporation applicants?

USPTO Expert
Although there are reduced fees for independent inventors and small businesses, the USPTO treats all applications in the same manner regardless of the fee paid.

Inventor
Can I market my provisional patent, after I mailed the application? If not, when?

USPTO Expert
Yes, you may market your invention at any time after your file the provisional. But you could lose your patent rights if you sell or offer to sell your invention more than one year before the effective filing date of your invention. The filing date of the provisional will be the effective filing date of a subsequent non-provisional as long as the disclosure of the provisional provides sufficient disclosure for the claims of the non-provisional, but you must file a non-provisional application in order to obtain a patent.

Inventor
What should I do if the (patent) examiner misunderstands the descriptions and benefits of the invention and compares it to prior art that has nothing to do with it?

USPTO Expert
In response to feedback from previous chat sessions, this month we have decided to answer more technical questions off-line in the written transcript of this chat which will be available in about a week on our website.  You can request an interview with the examiner. This interview can be in person or over the telephone. Give the examiner some advance notice of your request so that you both can agree on a convenient time. The interview could assist you in preparing your written response to the office action. An examiner has a burden to establish a basis for a conclusion of non-patentability. Section 2100 of the Manual of Patent Examining Procedure (MPEP) offers requirements to the examiner on developing a rejection. Probably MPEP 2111+ would be appropriate to your situation. From the MPEP sections, determine what rationale the examiner was required to use when drafting the rejection. If you can develop sound arguments why the examiner’s rejection failed to follow the MPEP guidance, then you may be successful in convincing the examiner to withdraw the rejection. http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r2_2100_508.pdf

Inventor
I just want to say that the PTO is providing an excellent service to the public.

 

Federal Circuit: Power Mosfet v Siemens and Infineon

Patent

Power Mosfet Technologies (PMT) v. Siemens AG (Fed. Cir. 2004)

PMT sued Siemens for infringement of its patented technology covering a voltage sustaining layer for a MOSFET.  (U.S. Patent No. 5,216,275).  Following a bench trial, the district court found that the accused products did not infringe the ‘257 patent. The Appellate Panel agreed with the district court and affirmed.

Because we affirm the district court’s claim construction, we must also agree with its conclusion that neither Infineon’s nor ST’s accused devices infringe the ‘275 patent.  We also find that, because a full construction of the claims was never completed prior to the district court’s final judgment, the district court could not have changed the claim construction and therefore did not abuse its discretion in denying PMT’s new trial motion.  Regarding Infineon’s cross-appeal, we conclude that the district court did not abuse its discretion in denying Infineon’s costs under either Rule 11 or 35 U.S.C. § 285.  Finally, we find that, in light of IR’s representations to the district court, the district court did not abuse its discretion in denying IR’s motion for costs under Rule 54(d).  Accordingly, the district court’s judgment of noninfringement, its denial of PMT’s motion for a new trial, and its denial of Infineon’s requests for fees and IR’s request for costs are all

 

Which Dictionaries are Used for Claim Construction?

Articles and Publications, Patent

Professor Joseph Miller along with James Hilsenteger have pulled together an interesting working paper discussing the Federal Circuit’s use of dictionaries in claim construction. (Abstract and Article Download). They looked at all Federal Circuit cases since 1995 and tallied the use of dictionaries. Findings:

1) General purpose dictionaries are much more popular than technical dictionaries (more than a 2:1 ratio).
2) Webster’s Third International is the most popular dictionary (25% of total).
3) Use of dictionaries appears to vary widely according to the members of each Appellate Panel (Miller provides a nice table in the appendix).

Finally, the authors propose a rule change that would “require that every patent applicant put her dictionary selections (general purpose and technical) on the record during examination, and that any resulting issued patent state the applicant’s dictionary selections on its face.”  According to the paper, this requirement would help to strengthen the public notice function of patents.

Comment: Interestingly, I was discussing a similar proposal with another attorney last week. We were thinking of scenarios where it would be in the Applicant’s best interest preset the dictionary to be used. For instance, linking your terms to a dictionary will result in well defined terms that are cheaper to litigate. However, many patent attorneys are reluctant to completely define their terms for fear of losing some undefined scope. This complex issue may be resolved quite soon by the Federal Circuit in Phillips v. AWH.

Federal Circuit: In re WILHELM ELSNER

Patent, Patent Cases 2004

In re WILHELM ELSNER (Fed. Cir. 2004)

German plant breeder William Elsner filed for a plant patent on his new variety of geraniums.  After receiving a 102(b) rejection from the Examiner that was affirmed by the BPAI, Elsner appealed to the Federal Circuit.

The Appellate Panel vacated and remanded.

We agree that the publication of the (international) applications coupled with foreign sales of the plants may constitute a §102(b) bar to patentability.  However, because the record is silent on the extent to which the foreign sales were known to the public, and because the Board did not adequately address the degree to which availability of the plants through foreign sales enabled the preparation of the claimed plants, we vacate the Board’s decisions in both cases and remand for further proceedings.

Double Patenting: The End of the Terminal Disclaimer?

Patent

Reversable Socket Wrench

Ex Parte Hu (Board of Patent Appeals and Interferences, 2004) (unpublished).

In this case, Hu appealed a final rejection by an Examiner of his application for a patent on a reversible socket wrench.  Hu did not dispute that some of the appealed claims were “patentably indistinct” from claims in one of his prior patents.  However, Hu agreed to “file a terminal disclaimer.”

The BPAI, however, refused to allow a terminal disclaimer.

Appellant does not cite any legal authority for the proposition that the mere offer to file a terminal disclaimer overcomes a rejection based on the judicially created doctrine of obviousness-type double patenting. We therefore uphold with the Examiner’s rejection.

This holding seems to be directly contrary to MPEP 1504.06.

Nonstatutory categories of double patenting rejections which are not the “same invention” type may be overcome by the submission of a terminal disclaimer.

Comment: One way to reconcile these two views is that Hu did not actually file a terminal disclaimer, but made a “mere offer to file” the disclaimer.  Thus, if he had actually filed the terminal disclaimer then perhaps the Board would have ruled in his favor.  Ultimately, this decision does not change any rules because it is “not written for publication and is not binding precedent of the Board.”

Public Use Evidence Required: Aspex Eyewear v. Concepts in Optics

Patent, Patent Cases 2004

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Aspex Eyewear v. Concepts in Optics (Fed. Cir. August 12, 2004) (not citable as precedent).

Aspex sued Concepts for infringement of its patented technology that covers a magnetically attachable auxillary lens for eyeglasses. (U.S. Patent No. RE 37,545 E). The district court granted summary judgment for the defendant based on a finding of invalidity under 35 USC 102 — finding that another person had invented the claimed eyeglasses before the critical date.

On appeal, the Appellate Panel reversed and remanded for two primary reasons:

1) drawings relied upon by the district court were not “printed publications” because there was no evidence of public availability; and
2) the testimony of prior public use (or “known … by others”) was not incontestable on summary judgment.

Software Patent Protection: A Growing Need

Articles and Publications, Patent

The importance and value of software patents continues to increase. There are several factors that weigh heavily in a company’s decision to go forward with patenting.

1) Patents provide a clear signal that the company has a unique product.
2) The current market for software is huge — proprietary positions excite investors.
3) Recently, very large damage awards have been seen in software patent cases.
4) Often companies with little or no patent portfolio are targeted for infringement suits.
5) Software patents are not only for “software companies” — software/firmware is an integral part of most new technologies.
6) The software industry is maturing — this means that patented technology may retain value for a longer time.
7) Small companies can obtain patents — and level the playing field.

Link to related article.
Find a patent attorney.

ITC: Plastic Bag Import Restrictions

Patent, Patent Cases 2004

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The International Trade Commission (ITC) has issued a general exclusion order prohibiting the unlicensed entry of plastic grocery and retail bags that infringe Superbag’s patented technology. (U.S. Patent No. 5,188,235). The Commission also determined that “public interest factors” do not preclude the issuance of the exclusion order.

Superbag had filed a complaint against four parties:

Thai Plastic Bags of Thailand; Hmong Industries of St. Paul, Minnesota; Spectrum Plastics of Cerritos, California; and Pan Pacific Plastics of Union City, California.

Read the full order here.
Thanks to IP-Updates for the link.

Federal Circuit: In Re David Wallach

Patent, Patent Cases 2004

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In re David Wallach (Fed. Cir. 2004).

By Donald Zuhn

In an appeal from a decision of the PTO Board, the Federal Circuit affirmed the rejection of claims directed to isolated DNA molecules encoding TNF binding protein II (TBP-II) under the written description requirement of 35 U.S.C. § 112.

Appellants had purified TBP-II from urine and determined (a) the amino acid sequence of an N-terminal portion of the protein, (b) the protein’s molecular weight, and (c) that the protein inhibited TNF activity. Appellants then pursued, in separate divisional applications, claims directed to proteins having the partial sequence, molecular weight, and inhibitory activity described and claims directed to isolated DNA molecules encoding such proteins. The DNA claims were rejected under § 112 as lacking an adequate written description in the specification. Appellants appealed to the Board, which affirmed.

Appellants asserted that because the PTO had effectively conceded that claims to the TBP-II protein were adequately described in the specification, the claims to isolated DNA molecules encoding the TBP-II protein were therefore adequately described in the specification. Specifically, Appellants argued that because the complete amino acid sequence of a protein is an inherent property of an isolated, fully characterized protein, and the determination of a protein’s complete amino acid sequence puts one in possession of all DNA sequences encoding that protein (as a result of the unequivocal correspondence between amino acids and DNA codons in the genetic code), Appellants’ full characterization of TBP-II (i.e., determination of its N-terminal amino acid sequence, molecular weight, and inhibitory activity) demonstrated possession of all DNA sequences encoding TBP-II. The PTO countered that because Appellants’ specification included neither the complete amino acid sequence of TBP-II nor any actual DNA sequence, and disclosed the sequence of only ten of the 185-192 amino acids that make up TBP-II, Appellants had not demonstrated possession of all DNA sequences encoding TBP-II.

The Court noted that while “the state of the art has developed such that the complete amino acid sequence of a protein may put one in possession of the genus of DNA sequences encoding it,” Appellants had not disclosed the complete amino acid sequence of TBP-II, but rather, had provided only a partial sequence of the protein. In addition, the Court concluded that Appellants’ possession of TBP-II “says nothing about whether they were in possession of the protein’s amino acid sequence [since] Appellants have not provided any evidence that the full amino acid sequence of a protein can be deduced from a partial sequence and the limited additional physical characteristics that they have identified.” With respect to the DNA claims at issue, the Court determined that absent a description of the complete TBP-II amino acid sequence or any evidence of a “known or disclosed correlation between the combination of a partial structure of a protein, the protein’s biological activity, and the protein’s molecular weight, on the one hand, and the structure of the DNA encoding the protein on the other,” the Board’s decision to affirm the rejection of Appellants’ DNA claims was proper.

NOTE: This is the first post by patent attorney Donald Zuhn, PhD. Don is a true expert in cutting edge biotech patent law and practices both prosecution and litigation at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. [Brief Biography].

Put your Logo on USPS Stamps

Patent

A company called PhotoStamps now allows you to put a photo or company logo on the stamp. It appears that the cost per stamp is the regular 37 cents.

Note: Although not directly related to patent law, I thought this was really cool. At MBHB, we already have a big stamp machine and postage paid envelopes, but this might be most useful for small firms — a way to customize your envelopes at a low cost.

Update: The cost is actually quite a bit more than 37 cents per stamp. The actual cost is $16.99 for 20 PhotoStamps plus shipping. This results in a cost of about 85 cents per stamp.

INNOVA / Pure Water v. Safari Filtration Systems

Patent, Patent Cases 2004

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INNOVA / Pure Water v. Safari Filtration Systems (Fed. Cir. 2004) (CLEVENGER, Rader, and Linn, JJ.)

Innova sued Safari for infringement its patented water filter assembly. (U.S. Patent No. 5,609,759). After construing the claims, the District Court (M.D. Florida) granted Safari’s motion for summary judgment of noninfringement.

Innova’s appeal with patent turns on the correct interpretation of the disputed claim term, “operatively connected.” In particular, Innova challenged that the District Court improperly imported a “tenacious physical engagement” limitation into claim language that does not require any such thing. The Appellate Panel agreed and vacated the decision in-part.

The district court erred. The asserted claims do not require that the filter tube and cap be affixed to one another in a manner that results in the two components forming a unitary structure. Neither party asserts that the term “operatively connected” is a technical term having a special meaning in the art of water filtration. Rather, it is a general descriptive term frequently used in patent drafting to reflect a functional relationship between claimed components. Generally speaking, and as used in the ‘759 patent, it means the claimed components must be connected in a way to perform a designated function. In the absence of modifiers, general descriptive terms are typically construed as having their full meaning.

Remanded for further proceedings.

Weighing the Costs and Benefits of an Interference versus an Infringement Lawsuit

Patent

In a recent article, Lara Kelley and Barbara McCurdy make the case for filing an interference proceeding in the Patent Office rather than filing a patent infringement suit in Federal Court.

Top Ten Reasons for Filing an Interference:
1. There is no presumption of priority or validity in an interference.
2. An interference can involve patentability issues in addition to priority issues.
3. The Board (BPAI) may understand the legal and technical issues better than a judge or jury.
4. An interference affords flexibility in patenting, such as amendments to claims.
5. Discovery is severely limited in an interference.
6. There is no live testimony or trial in an interference.
7. An interference is usually much cheaper.
8. An interference does not foreclose all opportunities for future trial litigation.
9. Provoking an interference may afford a party a stronger settlement position.
10. A successful interference outcome can result in a patent term extension.

Link to the Article