In re Morsa II – Prosecution Lessons

by Ryan Alley on October 22, 2015

in -, CAFC PTAB appeals

Case No. 2015-1107 (Prost, Newman, O’Malley)EvidenceOrArgument2

Pro se applicant Steve Morsa returns to the Federal Circuit following a remand to the PTAB in 2013’s In re Morsa. The original case was, on its surface, a lesson on the enablement requirement for anticipating prior art. But on another level the case spoke to the role of “mere attorney argument” versus evidence in a traverse of a factual rejection. The return case vindicates the value of evidence over attorney argument, as well as offering a lesson about the various sources of where relevant evidence can come from – including admissions in the specification.

For a review of the facts of the case and prior art at issue, see the previous post on Morsa I. Let’s move directly to what happened on remand at the PTAB: Read more …


Hey. What’s going on?

by Ryan Alley on October 14, 2015

in General

Well it’s been almost a year since the last post to this blog. For regular readers who have sorely missed new content here, my perfunctory apologies. For those who have emailed and commented asking about my status (with even a few concerns for my well-being!), my skeptical thanks. For the other 99.9% of you who didn’t notice and/or don’t care, my thorough understanding. This post is just to offer a brief explanation and some thoughts going forward.

I originally planned last October to step away from blogging for a couple months. This break was to focus on a spiking workload, get a handle on some time-consuming administrative things I had kept putting off, and, sure, take a pause to renew my zeal for blogging. The renewed zeal, however, was slower to arrive than I planned. Or perhaps more honestly, a filling docket threw the relatively low ROI of blogging into stark relief, and the inertia of not blogging had more mass than I expected. I’ve also been busy with other pro bono matters – I was again this year the chair and writer for AIPLA’s Giles Rich Moot Court Competition (2016 problem forthcoming at the end of this month), and I will be moderating a panel on IPRs next week at the Annual Meeting (please say hello if you attend?), so there’s that.

But it’s time to get back to it. Blogging Federal Circuit patent cases does have some merit – enough that I should make a little time to post thoughts and analysis here. So expect some new posts soon. But be warned; most posts going forward will be shorter, with less restatement of the case and more direct take-aways. And my output goal is maybe 0.5-1 posts per week. So no War and Peace here (as if we’d ever expect the latter in patent law). Hear from me soon.


Case No. 2014-1135 (Prost, Taranto, Hughes)

Finishing this trilogy of posts on claim construction of terms of art is CardSoft v. VeriFone. Like Hill-Rom v. Stryker and GE Lighting v. AgiLight, this case deals with the full Phillips approach to construing claim terms as they are known in a field and especially how intrinsic evidence – like application drafting and reference cited in prosecution – shape the construction. Unlike the past two posts, however, in CardSoft we see a term of art receive a narrow, non-infringing construction based on this approach. The case also offers some insights to claiming hardware and software, similar to Nazomi v. Nokia from earlier this year.

CardSoft sued VeriFone for infringing parent and child US Patents 6,934,945 and 7,302,683. The patents disclosed and claimed payment terminals that were capable of platform-independent programming through use of a virtual machine, which is/was something of a term of art. The ‘683 and ‘945 patents directly claimed the “virtual machine” as such: Read more …

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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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