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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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]

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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 …

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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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