• 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

      シュグルー・マイアンは今年度も、U.S. News and World Report誌のBest Lawyers年間ランキングにおいて優れた特許訴訟事務所の中でも高い評価を得ました。Best Law Firm部門の知的財産訴訟・特許訴訟分野で最高ランクに評価され、「最高ランク」の獲得は4年連続となりました。

      Best Lawyersは、法曹界において最も古く、最も格式のある、同業者の評価によるランキングを提供しています。同業者から推薦された弁護士が、当該実務分野の弁護士グループによって評価されますが、対応の迅速性・事業やニーズの理解度・費用対効果・対応の丁寧さに関するクライアントからの意見を考慮して厳格に評価が行われます。


    • 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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    • 4/14/2017

      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.
    • 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.  

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