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.
    • 06/12/2017

      In One-E-Way v. ITC, the Federal Circuit reversed the ITC's determination that the claim language "virtually free from interference" is indefinite, and remanded the case.

      One-E-Way owns U.S. Patent Nos. 7,865,258 and 8,131,391, which are directed to a wireless digital audio system designed to let people use wireless headphones privately without interference, even when they are using wireless headphones in the same space.  The patents share the same specification.

      At the ITC, the parties disputed whether the term "virtually free from interference" was indefinite, and the ITC confirmed the administrative law judge's summary determination, reasoning that one of ordinary skill in the art would not be able to discern with reasonable certainty what amount or level of interference constitutes ‘virtually free from interference.’

      On appeal, One-E-Way did not submit any extrinsic evidence to argue that “virtually free from interference” has any ordinary meaning to a person of ordinary skill in the art, so the indefiniteness inquiry therefore rests on the intrinsic evidence.  One-E-Way argues that the term is definite as meaning 'free from eavesdropping,' in view of the specification and the prosecution history. 

      Reviewing the intrinsic evidence, the court directed its attention to the specification describing that "private listening" feature of the invention is listening without interference from other user's wireless audio transmission devices.  The court also relied on a statement made by One-E-Way during prosecution of '885 patent that virtually eliminating interference could mean that eavesdropping cannot occur. 

      As a result, the majority decided that "virtually free from interference" is definite as meaning 'free from eavesdropping,' explaining that the term "virtually" does not expand the scope of the term "free from interference" without end because a system that permits eavesdropping is no longer captured by the asserted claims.
    • 06/07/2017

      Skky appealed the PTAB's decision in an IPR that Skky's patent (U.S. Patent No. 7,548,875) is obvious over a prior art reference (US 7,065,342, "Rolf").

      On appeal, Skky asserted that the claim term "wireless device means" invokes §112, para. 6, in an attempt to distinguishing over Rolf by importing limitations from the written description into the claims.  Skky argued that corresponding structure of "wireless device means" as described in the specification have multiple processors, which were missing in Rolf, and the claims should be also interpreted to require such elements.

      The Federal Circuit denied the argument on the grounds that the term "wireless device" is used by a skilled person in the art to designate structure and the claim does not recite any functions performed by "wireless device means."  In the claims of the '875 patent, the term "wireless device means" is not linked to or associated with any functional language.  Instead, the claims merely recite "wireless device means" as a recipient of media files transmitted from one or more servers.

      As a result, the court construed the claim under the broadest reasonable interpretation standard, and denied Skky's assertion regarding the multiple processors on the grounds that the specification includes an embodiment in which Skky's invention is implemented with software (i.e., without a need for additional processor) in a conventional cell phone having a single processor.
    • 05/11/2017

      In Cisco Systems, Inc. v. Cirrex Systems, LLC (Fed. Cir. May 11, 2017), the Federal Circuit affirmed in part and reversed in part the Patent Trial and Appeals Board's decision in an inter partes reexamination proceeding, holding all claims unpatentable for lack of written description.  The claims related to a planar lightguide circuit (PLC) which performs various functions including, in a representative claim, an "equalization" function. 

      The challenged claims recite that the equalization is performed inside the PLC.  Before the Board, both parties agreed that the equalization function occurs inside the PLC.  However, the Specification lacks any disclosure or suggestion of how placing attenuation material inside the PLC, which would necessarily impact the wavelengths in the PLC in the same way, would result in equalizing the intensities of different wavelengths traveling in the PLC.

      Cirrex argued to the Board that the claimed “equalization” could refer to equalizing intensities of the wavelengths inside the PLC with respect to the intensity of a wavelength outside the PLC, rather than requiring that the equalization apply only to wavelengths inside the PLC.  The Board accepted this claim interpretation, and withdrew rejections for lack of written description.
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