This is Jeopardy!A couple months ago I alluded to my blogging break being due to outside circumstances. As it turns out, these circumstances were my taping (and preparation for) the gameshow Jeopardy! If you’d like to see a patent attorney test his knowledge (and nerves) on national television, please check the Jeopardy! listings for channel and showtimes. I’ll also be tweeting a few thoughts on my taping, if anyone wants more play-by-play. All in all, it was a crazy but fun experience, and I had a blast meeting so many whip-smart and diverse other contestants!

What is, wish me luck?!

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Case No. 2013-1450 (Moore, Schall, Reyna)

Boilerplate. Most of us do it, but do generic copied-and-pasted statements of breadth in a specification do anything for us? The Federal Circuit in Hill-Rom v. Stryker suggests boilerplate at least can’t hurt. The case is a nice companion to the previous post’s GE Lighting v. AgiLight, again illustrating principles of application and claim drafting that can later control claim construction, and again with dueling opinions between Judges Moore and Reyna on different sides of that issue.

Hill-Rom asserted three patents – 5,699,038; 6,147,592; and 7,538,659 – against medical device giant (and common patent defendant) Stryker. The patents shared a priority chain and were all directed to hospital bed monitors that allowed medical personnel to remotely determine bed, and thus occupying patient, condition. The problem for Hill-Rom was the district court relied on narrow disclosures in the ‘038, ‘592, and’659 patents to give non-infringing constructions to several terms in the following representative claim: Read more …

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Case No. 2013-1267 (Rader, Moore, Reyna)

Claim construction disputes usually offer good prosecution lessons. The construction exercise unearths many different things from application preparation and prosecution that can end up controlling what claims mean, and thus what a patent’s scope and commercial importance is. GE Lighting v. AgiLight looks at the effects of redefinition and disclaimer in prosecution with regard to a term of art, and more importantly for this post, the case specifically deals with how claim elements may inherently describe more or less than their entireties. This can be useful in deciding whether to recite degree terms like “fully,” “completely,” “substantially,” and “partially” or leave them out of a claim.

GE held four US Patents on lighting elements and related electronics, which it asserted against AgiLight. The dispute centered on claim construction / non-infringement, and this post looks at two disputed terms in particular. First, US Patents 7,160,140 and 7,520,771 claimed an “IDC connector,” and second, US Patent 7,832,896 claimed an “optical element having a substantially ellipsoidal inner profile.” The district court gave both these terms narrow constructions and granted summary judgment of noninfringement on all patents, leading to a trip to the Federal Circuit to revisit the constructions anew. . . Read more …

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Incorporations by Reference – Vol. 24

by Ryan Alley on September 16, 2014

in IP News and Commentary

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

-My apologies for the unannounced blogging hiatus this summer. My absence is an exciting story, but I can’t tell it until later this year. For now, I’m hopefully back to “regular” posting with cases from the summer on a couple good, related topics (not patentable subject matter!) to be covered in the coming weeks. I’m also reworking my sidebar blog links for less load lag (and working on getting comments to show again) [ed note - both appear fixed now].

-Although you wouldn’t know it from their Notices site, the USPTO is currently requesting comments on all aspects of trial proceedings before the PTAB. Deadline for submission has been extended to October 16. [Federal Register]

-This month the Cato Institute’s Cato Unbound features some familiar attacks and rebuttals on patents. [Cato Unbound]

-Elon Musk may have sworn off enforcing Tesla’s patents, but he may yet find himself on appeal before the Federal Circuit . . .for a federal claim. [National Journal]

-I blogged about the black macaque selfie nearly three years ago, but the matter continues to attract attention as the Copyright Office weighs in. [LA Times]

-Registration for the AIPLA Annual Meeting at the end of October is now open. Please let’s meet up if you plan to attend! [AIPLA]

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Case No. 2013-1117 (Prost, Plager, Taranto)

Thoughtful patent family planning can maximize protection of a disclosure across jurisdictions, time, and differing aspects of inventiveness and commercial importance. To build strong patent families, it is important to properly and strategically claim priority and thus secure desired filing dates, patent terms, and divisional safe harbors. Medtronic CoreValue v. Edwards Lifesciences from earlier this year illustrates some caution areas and best practices in claiming priority, especially in families with complex heredity.

Medtronic sued Edwards for infringement of US Patent 7,892,281, which issued in early 2011 from a long line of patents dating back to an ancestor French application filed in late 2000. The district court, however, invalidated the ‘281 patent on summary judgment as anticipated by that same French application, because the ‘281 patent did not maintain a proper priority claim back to it. The exact family tree and priority claiming language were important here: Read more …

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Case No. 2013-1204 (O’Malley, Plager, Taranto)PackardWallet

Going meta, the Federal circuit seeks to make more definite the standard for indefiniteness before the USPTO in In re Packard. The per curiam opinion offers some modest guidance for responding to § 112(b) rejections in prosecution but does not reach the bigger question of whether the USPTO can apply a stricter or different indefiniteness standard from the Federal Circuit in post-issuance cases. Packard was perhaps not the best vehicle to explore this question; however, Senior Judge Plager in a lengthy concurrence offers his thinking as to why the question should be answered in the affirmative.

Packard filed US application 12/004,324 in 2007 for a coin holding card that could be affixed to a purse or wallet to hold change. Examination proceeded through two rounds, at which point all remaining claims 28-37 stood rejected as, inter alia, indefinite. Packard appealed, and the Board affirmed the § 112(b) rejections to the following representative claim: Read more …

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Case No. 2013-1418 (Rader, Prost, Chen)Gilead Relations

Shooting sparrows with a cannon, the Federal Circuit in Gilead Sciences v. Natco Pharma fashions a new rule for qualifying claims as references for obviousness-type double patenting. The rule strictly accounts for only the earliest expiration date among patents – without regard to filing date, issue date, priority claim, or patent term adjustment. This has the potentially wide-reaching effect of requiring patents sharing origin and mutually obvious claims to expire together at the earliest expiration of any such patent. Portfolio managers, or really any inventor or owner of multiple patents with related claims between them, would thus do well to invoke restrictions wherever possible and consider disclaiming term among similar applications and issued patents, to the degree Gilead is followed.

Gilead asserted US Patent 5,763,483, directed to methods and compounds for treating influenza, against Natco. While stipulating to infringement, Natco defended that the ‘483 patent claims were invalid for obviousness-type double patenting (ODP) over claims in Gilead’s US Patent 5,952,375, also to compounds for treating influenza and having the same inventors as the ‘483 patent. The district court declined to invalidate the ‘483 claims, finding ODP inapplicable here because the ‘375 patent issued after the ‘483 patent. The later-issued ‘375 patent included a terminal disclaimer listing the earlier ‘483 patent, but the two patents otherwise had separate priorities and lineages, looking like this: Read more …

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Case No. 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 …

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