• April 18, 2017
      The Patent Trial and Appeal Board recently denied Cover Business Method (CBM) review of an Internet advertising display patent assigned to KlausTech. The petitioner, Google, argued that the claim limitation “retaining … a record of the browser identity” should be construed as financial in nature because the specification describes determining compensation for publisher websites and...
    • January 27, 2017
      In Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001, (PTAB March 5, 2013), the Board set forth five factors—commonly referred to as the Garmin factors—for determining whether “additional discovery” will be granted to a party during a proceeding before the Board, such as an inter partes review (IPR) covered business method review (CBM) or...
    • October 06, 2016
      It was known that the Patent Trial and Appeal Board (“PTAB”) rarely grants a patent owner’s motion to amend claims during inter partes review (IPR) proceedings, and there is no exception in an IPR proceeding involving Veritas Technologies LLC and Veeam Software Corporation (No. IPR2014-00090).  In view of the PTAB’s recent denial, Veritas appealed to...
    • September 26, 2016
      When a particular patent is involved in an inter partes review (IPR) proceeding or other post-grant review proceeding, the USPTO has wide discretion in determining whether to allow an additional proceeding to be instituted or continued.  The two governing statutes are 35 U.S.C. §315(d) and 35 U.S.C. §325(d), each of which states that “the Director...
    Patent Office Trials Blog
    • 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.
    • 3/7/2017
      On February 22, 2017, the Supreme Court in Life Technologies Corp. Et. Al. v. Promega Corp., No. 14-1538, 2017 WL 685531, held that exporting a single component of a patented multicomponent invention from the U.S. for combination with other components for distribution and sales outside of the U.S. does not raise patent infringement liability under 35 U.S.C. § 271(f)(1). The Supreme Court reversed the Federal Circuit's decision that exporting a single important component of a patented multicomponent invention is substantial enough to invoke patent infringement under 35 U.S.C. § 271 (f)(1). 2017 WL 685531 at *1.
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    • 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."

    • 03/07/2017

      In precedential opinion, the Federal Circuit held that a reference that merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the claimed invention does not teach away from the claimed invention.

      The claims at issue are directed to a system in which a user can identify a supplier of goods or services over the internet. Claim 19 recites "a rollover viewing area that individually displays information corresponding to more than one of the related subject matter links in the same rollover viewing area." There was no dispute that each of the claim limitations was disclosed in one or both of the references cited in the rejection under 35 U.S.C. § 103. However, Meiresonne argued that the cited references taught away from the claimed invention. The Federal Circuit disagreed.

      The Federal Circuit held that "describing descriptive text as '[o]ften[]...cursory, if not cryptic' does not automatically convert the referenced to one that teaches away from combining text descriptions with a rollover window." In particular, the Federal Circuit held that the cited references do not teach away from the invention because "the references do not say or imply that text descriptions are 'unreliable,' 'misleading,' 'wrong,' or 'inaccurate,' which might lead one of ordinary skill in the art to discard text descriptions completely." Consequently, the Federal Circuit concluded that the Board's obviousness determination was supported by substantial evidence.  

    • 3/7/2017
      On February 22, 2017, the Supreme Court in Life Technologies Corp. Et. Al. v. Promega Corp., No. 14-1538, 2017 WL 685531, held that exporting a single component of a patented multicomponent invention from the U.S. for combination with other components for distribution and sales outside of the U.S. does not raise patent infringement liability under 35 U.S.C. § 271(f)(1). The Supreme Court reversed the Federal Circuit's decision that exporting a single important component of a patented multicomponent invention is substantial enough to invoke patent infringement under 35 U.S.C. § 271 (f)(1). 2017 WL 685531 at *1. 
    • 2/22/2017

      At district court, Promega sued Life Technologies Corporation et al. (“Life Tech”) for direct infringement under 35 U.S.C. § 271(a) and inducing infringement under 35 U.S.C. § 271(f)(1) of five patents related to copying of sequences of a DNA strand.  Promega Corp. v. Life Techs. Corp., No. 10-CV-281-BBC, 2012 WL 12862829 (W.D. Wis. Sept. 13, 2012).  Since four of the patents owned by Promega were found invalid, only U.S. Reissue Patent No. RE 37,984 (“Tautz patent”), to which Promega was an exclusive licensee, was at issue.  The Tautz patent is directed to a kit for analyzing polymorphism in at least one locus in a DNA sample including at least five components.  One of the kit’s five components, an enzyme known as the Taq polymerase, was manufactured by Life Tech in the United States and then shipped to the United Kingdom, where the four other components were made, for combination there.  At the conclusion of trial, a jury found in favor of Promega regarding infringement of the Tautz patent and awarded more than $50M in damages.  However, the district court vacated this award, finding that infringement could not be found as a matter of law under either § 271(a) or 271(f)(1).

      On appeal, the Federal Circuit agreed that there was not sufficient evidence for direct infringement under § 271(a), but reversed the district court’s decision regarding infringement under § 271(f)(1) and reinstated the jury award of damages.  Promega Corp. v. Life Techs. Corp., 773 F.3d 1338 (Fed. Cir. 2014).  Section 271(f)(1) states:

      Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

      The Federal Circuit found that 1) § 271(f)(1) does not require a third party (Life Tech both supplied Taq polymerase to the UK and combined with the other components of the Tautz patent abroad), 2) “substantial” means “important” or “essential” and 3) “portion” means “part of a whole.”  Based on these findings, the court concluded that Taq polymerase must be “a substantial portion” because it is one of the “main” and “major” components of the accused kit, as conceded by Life Tech.

      Life Tech appealed to the Supreme Court, which reversed the Federal Circuit’s reinstatement of the jury verdict.  Specifically, although the Supreme Court agreed that a third party is not required for infringement under § 271(f)(1), the Supreme Court disagreed with the Federal Circuit’s qualitative reading of “a substantial portion” and instead held that this term is quantitative in nature.  In arriving at this holding, the Supreme found that “all” and “portion” convey a quantitative meaning and the modifier “of the components” would be rendered meaningless if these terms were given a qualitative meaning.  The Court further stated, “[r]eading § 271(f)(1) to cover any single component would not only leave little room for § 271(f)(2), but would also undermine § 271(f)(2)’s express reference to a single component ‘especially made or especially adapted for use in the invention.’”  Accordingly, the Court concluded that a single component of a multicomponent invention does not constitute “a substantial portion of the components” under § 271(f)(1).
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