Patent Office Trials Blog
    • 6/14/2017

      On June 12, 2017, the Supreme Court granted certiorari to review whether the America Invents Act's provisions on inter partes review (IPR) violate the Seventh Amendment right to jury by extinguishing patent claims through a non-Article III court. Oil States Energy Services LLC v. Greene's Energy Group LLC.1 The USPTO's authority to decide IPRs does not stem from Article III of the Constitution. Rather, this authority is firmly rooted in Article I. Article I gives Congress the authority "To promote the Progress of Science and useful Arts, by securing for limited Times to Writers and Inventors the exclusive Right to their respective Writings and Discoveries." In other words, Article I grants Congress the power to make patent laws. The IPR provision comprises a major part of Congress' most recent patent legislation, the America Invents Act.

    • 3/31/2017
      On December 9, 2016, the Court of Appeals for the Federal Circuit in a per curiuam decision affirming the determination of the International Trade Commission, which found no violation of Section 337 as to certain outdoor grill products that had been accused of infringement of a patent owned by A&J Manufacturing. A&J Manufacturing was the complainant in the underlying ITC investigation (337-TA-895). Outdoor Leisure Products was named as a respondent in that investigation, and A&J Manufacturing had sought to have Outdoor Leisure Products’ grills excluded from importation into the United States. During the investigation, the Commission was persuaded that redesigned grills made by Outdoor Leisure Products did not infringe A&J Manufacturing’s patent. A&J appealed that decision to the Federal Circuit, and Outdoor Leisure Products intervened in the Federal Circuit proceeding in support of the Commission. Outdoor Leisure Products is represented by Michael Dzwonczyk, Mark Boland, and Brian Shelton of Sughrue Mion. The Federal Circuit decision is A&J Manufacturing LLC v. U.S. International Trade Commission, No. 2015-1494.
    • 3/27/2017
      Congratulations to Jody Drake for admission to the Fellows of the American Bar Foundation. This honor is given to attorneys, judges, law faculty and legal scholars who have exhibited outstanding dedication to the welfare of their communities and to the highest principles of the legal profession. Membership to this esteemed group is by invitation only and is limited to one percent of the lawyers licensed to practice in each jurisdiction.
    • 3/24/2017
      Sughrue has once again made it among the elite patent litigation firms to make the "Top Tier" rank in the annual U.S. News and World Report Best Lawyers rankings. Sughrue was recognized in the Best Law Firm top tier rankings in the areas of Intellectual Property Litigation and Patent Litigation. Sughrue has obtained the coveted “Tier 1” ranking for four consecutive years.

      Best Lawyers is the oldest and most prestigious peer-review publication in the legal profession. Attorneys are peer-nominated and evaluated by a panel of attorneys within their practice area. Nominations are put through a rigorous evaluation process which includes client feedback regarding responsiveness, understanding of business and its needs, cost effectiveness and civility.

      Sughrue Mion, based in Washington D.C., is a leading global intellectual property firm, counseling clients as they navigate the complexities of patent and trademark law. Sughrue’s practice is focused solely on intellectual property law, including counseling, prosecution, licensing, litigation, portfolio management and enforcement. Sughrue brings unmatched experience in patent interference proceedings and Post Grant Review, including ex parte and inter partes reexamination proceedings. In addition to their legal expertise, Sughrue’s attorneys have technical and scientific backgrounds ranging from electrical and computer technology to biotechnology and pharmaceuticals, allowing for a true understanding of their clients’ business challenges and goals.
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    • 7/9/2017
      Inter partes review (“IPR”) has been popularly adopted and used as a strategy for invalidating patent claims due to its compact and expedited process. The Board is required to render an institution decision within 3 months of preliminary briefings on issues of claim patentability and a final decision within 12 months of any instituted proceeding. Such a time frame allows both a petitioner and a patent owner to reach a conclusion on the patentability dispute. Further, the expedited schedule allows each party to understand its relative strength of argument, leading to a settlement within a relatively short period of time as compared to a proceeding before a federal district courts, thereby saving time and expense in the patent dispute.
    • 4/14/2017

      In Core Wireless Licensing S.A.R.L. v. Apple Inc., the Court of Appeals for the Federal Circuit ("CAFC") affirmed a district court denial of a JMOL motion to overturn a jury verdict of noninfringement which was based on a magistrate judge's claim construction of a "means-plus-function" claim element and its interpretation regarding the corresponding structure for the claim element as disclosed in the patent specification. 

      Claim 17 of the patent-in-suit, U.S. Patent No. 6,978,143, is directed to a means for sending packet data from a mobile station (i.e., a cellular telephone) to a network using a selected channel.  The underlying issue in the case was whether the claim requires that the mobile station is capable of making the channel selection as between a "common channel" or a "dedicated channel." 

      The specific claim element at issue recites:  "means for comparing said threshold value of the channel selection parameter to a current value of the channel selection parameter for basis of said channel selection."  In construing the claim, the magistrate judge first determined that the claim element is to be interpreted under 35 U.S.C. §112(f) as being a "means-plus-function" element, and that the corresponding structure for performing the function is "a control unit 803 [in the mobile station" wherein the control unit 803 is programmed . . . in accordance with the algorithm shown in Fig. 6, step 650." 

      The district court adopted the magistrate judge's claim construction, and based on the cited portion of the '143 patent specification, held that the mobile station "must have the capability to perform "channel selection," even if the capability is not used during the performance of the claimed method.  Based on this claim construction, and in view of Apple's evidence that its mobile stations are not capable of making a channel selection as between a common channel and a dedicated channel, the district court upheld the jury verdict of noninfringement. 

      On appeal, the CAFC affirmed the district court decision, noting that the text of the claim, the prosecution history, and extrinsic evidence of a presentation to an outside organization all support the district court's claim construction, and emphasizing the rule from WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999) that "in a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purposes computer programmed to perform the disclosed algorithm."
    • 4/11/2017

      Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.
      Federal Circuit No. 2016-1900
      March 14, 2017

      In a precedential opinion reversing the Patent Trial and Appeal Board ("the Board") in IPR2014-01122, the Federal Circuit held that the claims of U.S. Patent 7,208,895 are not anticipated by Kusaka (U.S. Patent 5,569,995). In particular, the Federal Circuit held that the Board had improperly applied the holding of Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).

      The claims at issue are directed to a system for controlling the torque of an electromagnetic motor. According to claim 12, the method includes "combining the IQr demand and the dr-axis injection current to produce an IQdr demand." Both parties agreed that the "IQdr demand" signal must be in the rotating frame of reference before being converted to the stationary frame of reference.

      The alleged anticipatory reference, Kusaka, did not disclose phase reference currents in the rotating frame of reference. However, citing Kennametal, the Board held that Kusaka still anticipated claim 12 because a person of skill in the art would "at once envisage" the missing limitation.

      The Federal Circuit, reversing the Board, stated that Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would "at once envisage" the missing limitation. Rather, the relevant question in Kennametal is whether the disclosure of a limited number of combination possibilities discloses one of the possible combinations. The Federal Circuit then explained that "Kennametal does not permit the Board to fill in missing limitations simply because a skilled artisan would immediately envision them."

    • 03/23/2017

      In University of Utah v. Max-Planck et al., the Court of Appeals for the Federal Circuit ("CAFC") affirmed a district court finding that the case was not "exceptional" within the meaning of 35 U.S.C. §285, and therefore, attorney fees were not to be awarded to the prevailing party. 

      The University of Utah ("UUtah") brought an action against Max-Planck for correction of inventorship of a portfolio of ten U.S. patents (known as the "Tuschl II patents") relating to the field of RNA interference.  Prior to the earliest filing of a patent application, Dr. Thomas Tuschl had published an article regarding various discoveries in the RNAi field, and a "mini-review" summarizing the state of RNAi research was published by Dr. Brenda Bass of UUtah.  Notably, the mini-review also included several of Dr. Bass's hypotheses.  Subsequently, ten patent applications were filed, and the Bass mini-review was cited as prior art during prosecution in all ten applications. 

      During the discovery phase of the case, a deposition of Dr. Bass was taken, and during the deposition, Dr. Bass made several admissions that undermined the allegation that she had reduced the inventions to practice.  Then, UUtah withdrew its claim for sole inventorship, but retained its claim for joint inventorship, but the district court granted summary judgment to Max-Planck, thereby dismissing the joint inventorship claim. 

      Max-Planck then moved for $8 million in attorney fees under §285, claiming that in light of Dr. Bass's testimony, UUtah lacked "any meaningful basis" for its lawsuit.  However, the district court denied the motion, citing Kimberly-Clark Corp. v. Proctor & Gamble, 973 F.2d 911 (Fed. Cir. 1992) in support of the proposition that "one inventor seeing a relevant report and building upon it might be an element of joint behavior supporting collaboration," and based on this principle, holding that UUtah's case was not "objectively unreasonable." 

      On appeal, the CAFC held that district courts have broad discretion to make determinations regarding whether a case is "exceptional" on a case-by-case basis, considering the totality of the circumstances, and that there is "no precise rule or formula for making these determinations."  For this reason, the CAFC asserted that "[t]he trial judge was in the best position to understand and weigh these issues," and that no abuse of discretion was found.
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