Case Nos. 2013-1433 (Rader, Prost, Chen)

Some areas of the law have distinct “I know it when I see it” aspects. Obviousness of design patents seems to fall under this visual category. In MRC Innovations v. Hunter Manufacturing, we see the Federal Circuit fairly easily invalidate a garment design patent on summary judgment, even when the prior art was missing some claimed design elements. By easing the requirements for identifying and modifying a primary reference under § 103 in design cases, MRC Innovations makes something of a high water point out of last year’s High Point design case.

The plaintiff here, MRC, asserted US design patents D634,488 and D634,487 against their former distributer Hunter for sale of pet-wearable jerseys. The ‘488 and ‘487 patents illustrated, and thus claimed, the following designs, illustrated on a dog with red annotation of key features: Read more …


Brief mentions of IP stories floating around in the past few weeks that might be of interest.

-You now have 2 months to respond to a restriction requirement and 14 months to claim provisional and foreign priority in the US. Thanks PLTIA! [USPTO]

-Merits briefing is complete in CLS Bank before the Supreme Court. The US Solicitor General filed an amicus brief arguing against patentable subject matter.  [SCOTUSblog]

-Speaking of Section 101, the USPTO has issued some rather sweeping (non-interim) guidelines in that area. [PharmaPatents]

-Speaking of the USPTO, the organization still has no Director, but it did recently gain a new General Counsel. [PatentlyO]

-I haven’t been able to post as much as I’d like this year due to trial work. Now that Daylight Saving Time has started, it’s only going to get worse. [The Bulletin]


Case No. 2013-1165 (Lourie, Dyk, Wallach)Magical CPU

Claiming an apparatus by what it does rather than by how it is structured gets a lot of debate, especially in connection with software inventions. Yet for all the hand-wringing, not a whole lot of attention has been paid to how the Federal Circuit is (re-)molding construction jurisprudence for functional terms to give them relatively narrow scope. Cases like Typhoon Touch, Aspex Eyewear, and the topic of the previous post – In re Giannelli – all demonstrate functional claim terms yielding less scope. Nazomi v. Nokia continues this approach, in the context of computer processor claims that recite functionality. The case offers good lessons for claiming software versus hardware and hardware-and-software combinations for maximum breadth.

Nazomi asserted US Patents 7,225,436 and 7,080,362 against several downstream users and retailers of consumer electronics using chips that allegedly infringed CPU claims in the ‘436 and ‘362 patents. The district court interpreted the ‘436 and ‘362 claims – ostensibly reciting processor structures and not methods – to require operating software in addition to hardware. Functional claim terms compelled the district court’s narrower, hardware-and-software-together construction, as highlighted in the following claim: Read more …


Case No. 2013-1167 (Rader, Lourie, Moore)

Almost two years ago the Federal Circuit decided Aspex v. Marchon, a case including, among much else, a rather interesting treatment of functional claim terms like “adapted to” and “configured for.” There, the court construed functional terms to require more than mere capability of performing the recited function, but actual design intention to perform the function. Given the litigation context of that case, it was not clear whether functional language would be so weighty in overcoming a prior art rejection before the USPTO under its BRI standard. Comes now In re Giannelli to dispel this caution and demonstrate how functional language can require more than mere capability in the prior art to be rejected in prosecution.

Raymond Giannelli, through fitness machine company Cybex, applied for a patent on a rowing machine in US application 10/378,261. The claims were rejected as obvious and anticipated over Giannelli’s own prior art chest press invention in US Patent 5,997,447. Giannelli appealed, and the Board affirmed the § 103 rejection to the following functional-language-based claim: Read more …

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Case No. 2013-1490 (Dyk, Moore, Taranto) (nonprecedential)

Here’s an easy New Year’s resolution: don’t use “the present invention” to describe example embodiments in a patent specification. Based on the troubles caused in AstraZeneca v. Hanmi, it’s a good practice throughout patent preparation and prosecution to red-flag “invention” anytime it would appear. The case is a pretty straightforward reminder of how even broadly, well-differentiated claims can be pared in scope by narrow specification drafting using terms like “the present invention.”

AstraZeneca owned US Patents 5,714,504 and child 5,877,192 covering the active ingredient in Nexium, the magnesium salt of esomeprazole, a proton pump inhibitor useful for reducing stomach acid. Hanmi sought approval from the FDA to market a similar drug using the strontium salt of esomeprazole as a generic. AstraZeneca brought suit under § 271(e)(2)(A), alleging that the strontium esomeprazole formulation infringed the following broad claim: Read more …

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Case Nos. 2013-1047+ (Prost, O’Malley, Taranto)Spinal column

Avoiding specification-bound claim constructions (through careful claim drafting or luck of the draw on judges) may just set one up for a different failure. As illustrated by Synthes v. Spinal Kinetics, achieving a plain meaning claim construction that exceeds disclosed examples may still trigger invalidation for lack of written description, even in a mechanical setting. The case thus provides general lessons for complying with § 112(a) and specific cautions when trying to capture competitive scope with broadening amendments in prosecution.

Synthes owned US Patent 7,429,270 directed to implants that could replace intervertebral discs, the cartilaginous shock absorbers between vertebrae. Synthes asserted the ‘270 patent against Spinal Kinetics (called “SK” in the opinion) for manufacturing M6-C and M6-L discs, alleging they infringed the following claim added during prosecution of the ‘270 patent: Read more …

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Brief mentions of IP stories floating around in the past few weeks that might be of interest.

-Supreme Court grants cert in CLS Bank. I would say that this will only further muddle patentable subject matter doctrine, but I’m not sure the area can get any less clear. [SCOTUSBlog]

-The House has passed Rep. Goodlatte’s Innovation Act with slight modification since its introduction. Its prospects in the Senate, where competing legislation is already pending, is less certain. [PatentlyO]

-Based on the oral arguments and Judge Plager’s presence on the panel, the Federal Circuit looks poised to reach the merits of the USPTO’s unique indefiniteness standard from Ex Parte Miyazaki. [In re Packard oral argument]

-CNNMoney ranks “Patent Attorney” the 49th best job in America for 2013. Where does one sign up for the $175,000 median annual salary? [CNNMoney]

-Looking for more even ways to get an appeal designated as a new ground of rejection after Rambus v. Rea? The Federal Circuit also offers up In re Biedermann for your consideration. [PharmaPatents]

-If algorithms aren’t patentable subject matter, perhaps they’ll still find IP usefulness in creating copyrightable subject matter. [Huffington Post]

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Randall Mfg. v. Rea – Prosecution Lessons

by Ryan Alley on December 6, 2013

in -, CAFC PTAB appeals

Case No. 2012-1611 (Rader, Dyk, Taranto)CeilingStoredpanels

Like all good things, the successful run of arguments about divergent problems and incompatibility between prior art and claims against § 103 must end. Randall Mfg. v. Rea brings us back, at least from the previous three posts, to some KSR realities: problems solved by claims are unimpressive against § 103 when similar problems have common sense solutions anywhere in the prior art; and physical incompatibilities between prior art embodiments won’t stand in the way of a common sense solution, at least for mechanical inventions.

FG Products owned US Patent 7,214,017, disclosing and claiming moveable partitions to divide up shipping containers. The partitions claimed in the ‘017 patent could be formed by combining multiple independently-moveable panels that which were further independently stowable by lifting them flat against the ceiling. Third-party requestor and competitor Randall successfully ensnared the ‘017 patent in an inter partes reexamination request, citing several pieces of prior art. While the Examiner rejected the claims as obvious over the prior art, the Board reversed, finding the following new claim allowable: Read more …

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