Tag Archives: Claim Construction
Patently-O TidBits on Patent Reform
BPAI May Not Substitute its Engineering Expertise for Hard Evidence (In an Interference)
Watch-Out!: Bleed-through Claim Construction and Argument Estoppel
Sarnoff Discusses KSR v. Teleflex
By Professor Joshua Sarnoff, Assistant Director of the Glushko-Samuelson Intellectual Property Law Clinic and a Practitioner-in-Residence at the Washington College of Law, American University. Professor Sarnoff filed an amicus brief in support of Petitioner KSR.
In its unanimous decision in KSR Int’l. Co v. Teleflex Inc., No. 04-1350 (April 30, 2007), the Supreme Court expressly overruled the Court of Appeals for the Federal Circuit’s “teaching-suggestion-motivation” (“TSM”) test for finding a claimed invention obvious and reaffirmed the Court’s precedents (in light of the 1952 enactment of Section 103 and its holding in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)) regarding the obviousness of patents “based on the combination of elements found in the prior art” where there the combination “does no more than yield predictable results.” Slip op. at 11-12. The Court’s decision has therefore called into question the validity of hundreds of thousands of claims in issued patents, and will likely lead to a dramatic change to the method by which the Patent Office, the courts, and the bar conduct their obviousness analyses.
Nevertheless, the Supreme Court’s opinion appears self-consciously narrow and provides little additional guidance for how to apply the Graham approach. The Court’s decision leaves unclear whether the party with the burden of proving obviousness must demonstrate that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue,” or only that the claim at issue if patented would reflect an “advance[] that would occur in the ordinary course without real innovation[, which] retards progress and may, in the case of patents combining previously known elements, deprive inventions of their value or utility.” Slip op. at 14, 15. As the Court noted, “as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.” Slip op. at 24. Although the Court recited the Constitutional language, it did not expressly hold that obviousness is a constitutional requirement. Further, the Court left to later case law any consideration of the extent to which the Court of Appeals’ more recent statements regarding the flexibility of its TSM test is consistent with Graham and the Supreme Court’s earlier precedents. Slip op. at 18.
CAFC: Claim Differentiation Again
Humerus Claim Construction: Plain Meaning Redux
Prosecution History Leads to Limiting Preamble
Claim Differentiation
Patently-O TidBits
Recapture: Disclaimer in Parent Must be Rescinded in Continuation
CAFC Denies Challenge to Patent Ownership
Patent Reform is in the Air
Cargill v. Canbra: Extensive Prosecution Increases Likelihood of Inequitable Conduct
Shield vs. Sword: CAFC Finds Inequitable Conduct But Not Antitrust Fraud
In re Nuijten: Patentable Subject Matter, Textualism and the Supreme Court
By Professor John F. Duffy, George Washington University
[PDF Version of this Post] In re Nuijten, which is being argued to the Federal Circuit today, presents the important issue of whether a new type of artificially constructed signal may be patented. The Patent and Trademark Office opposes patentability on the grounds that, as a matter of textual interpretation, signals do not fall within any one of the four categories of patentable subject matter - "process, machine, manufacture, or composition of matter" - identified in section 101 of the Patent Act. PTO Br. at 12 (quoting 35 U.S.C. § 101). Though Nuijten raises important issues concerning the scope of patentable subject matter under U.S. law (and that's reason enough for most patent practitioners and scholars to care about its outcome), the case is also about much more. It is about the fundamental approach to interpreting the Patent Act and the effect of the Supreme Court's recent interest in patent cases. To appreciate those larger issues, we must begin with a basic understanding of the facts at issue.
Modern signals (e.g., for carrying audio, video or data) may be constructed to contain embedded "supplemental data" or "watermarks," which typically contain information such as the source or copyright status of the underlying information being transmitted. The addition of such watermarks, which is old in the art, can distort the underlying signal. Nuijten invented a new way to add watermarks that results in less distortion. Nuijten filed a patent application with claims directed to (1) the new process for adding watermarks, (2) storage media containing signals encoded by the new process, and (3) the signals themselves. The PTO has allowed claims for the process and for the storage media containing the signals, but not for the signals themselves. The PTO does not disputed that the signals sought to be patented are demonstrably new and nonobvious. The agency's sole objection rest on section 101 of the Patent Act.
CAFC: “Circuit means” interpreted as means-plus-function
CAFC: Construction of Essential Features and Impermissible Recapture
Wegner: Escaping the Depths of the Patent Shadows
A response to Merges,
By Hal Wegner
Professor Robert P. Merges makes much sense in his op-ed piece, Back to the Shadows, or Onward and Upward? Current Trends in Patent Law. We and thoughtful supporters of the patent system share much common ground. Professor Merges touches on numerous points where there is hardly any significant difference with this writer, including the domestic results of the eBay decision from last year. In his analysis of the Supreme Court, Professor Merges is correct that the Court is generally “pro business”, but it is another matter whether in some industries being “pro business” means being “pro-patent”.
“Pro Business” as Anti-Patent, a new Direction at the Court: Professor Merges is absolutely correct that the Supreme Court today is “pro-business”. Whether the majority is pro-patent is possible but not yet conclusively determined: It is too soon to tell. It is undeniable that there is a solid, anti-patent Supreme Court core consisting of Justices Breyer and Stevens. Justice Stevens’ anti-patent record reaches back to the mid-1970’s and is too well documented to question. Yet, Justice Breyer is apparently now the more enthusiastic anti-patent of the two; they are the only members of the Court in this century to have taken the view that the open door to § 101 patent-eligibility for “living” inventions in the Chakrabarty case should be narrowed, arguing in a dissent in J.E.M. that the utility patent law “does not apply to plants”.(1) Just last year, an anti-patent drumbeat manifested in the Breyer dissent from the Metabolite “DIG” (joined by Stevens) plus their joint participation in the Justice Kennedy concurrence in eBay further validates their anti-patent bias. Justice Souter joined both the Metabolite DIG dissent and the Kennedy eBay concurrence, but whether he is truly a solid part of an anti-patent core requires more data points; they may be forthcoming in shortly in KSR and in early Spring in Microsoft. Whether other members of the Court join this core remains to be seen.
Feeding this nascent anti-patent core are two dominant themes: First, while the Supreme Court is pro-business, a major segment of the business community is largely anti-patent, turning the patent system upside down: Under this twisted view of patents, being “anti-patent” may be “pro business”. Second, the patent jurisprudence of the Federal Circuit has created and continues to create problems that necessarily fuel further growth of an anti-patent sentiment.