• Learning from common patent application mistakes by inventors

    The goal in a patent application is to provide a full, clear, and exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants the patent to cover. Unfortunately, while articulating an invention many inventors fall victim to a host […]

    The post Learning from common patent application mistakes by inventors appeared first on IPWatchdog.com | Patents & Patent Law.

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  • The PTAB: Number One Enemy of Inventors

    When we apply for a patent, we are sharing our secret, our discovery, with the world. In exchange for sharing our secret we are promised 20 years of exclusive rights, a promise signed and sealed by the Director of the United States Patent and Trademark Office. But with the PTAB, it means nothing. No guarantee. No warranty. Arguably a fraud. It will be revoked – by the same agency that issued it – at least 90 percent of the time.

    The post The PTAB: Number One Enemy of Inventors appeared first…

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  • COMPARISON OF

                            目次はこちら

    COMPARISON OF

    –> comparison between / with

    $$ As can be clearly seen from a comparison of the clock data patterns in steps 1 and 4, the clock data 4 for track n+1 is delayed by a time T relative to the clock data 1 for track n. / 段階1と段階4のクロックデータパターンの比較から明らかに分かるように、トラックn+1のクロックデータ4は、トラックnのクロックデータ1に比べて時間Tだけ遅れている。(USP6172830)

    $$ The comparison of the fingerprints enables the test disc to be authenticated. / 指紋の比較は、テストディスクを認証することを可能とする。(USP6560176)

    $$ As can be seen from a comparison of FIGS. 11 and 12, the grid 52 in FIG. 12 is more dense than the grid 52 in FIG. 11. (USP5774571)

    $$ Embodiments of the present invention enable two or more keywords within a data set to be associated with each other, for example keywords that form a phrase, with the result that the accuracy in comparison of similarity of data sets may be improved. / この発明の実施態様はデータ組内部で2以上のキーワードが互いに他と関係づけられるようにしており、例えば語句(フレーズ)を形成し、データ組の類似性の比較の精度が改善されるような結果をもたらしている。(USP6353827)

    $$ A comparison of FIGS. 4 and 6 will show that six of the events selected by the operator for prediction set out in the line 50 are displayed on the display of FIG. 6. (USP6287199)

    $$ As will be apparent from a comparison of FIG. 9A and FIG. 9B, the message PKTMSG_GROUP_LOGON is equivalent to both the logon and the logon_ack messages of FIG. 9A. (USP02018462)

    $$ Nonetheless, it is apparent from comparison of FIGS. 20 and 21 that the scene has been portrayed with good accuracy in the virtual image. (USP6327381)

    $$ We have determined by experimentation and by comparison of this sequence with known heparin binding regions that this portion of MIP1 has heparin binding activity. / 我々は、実験により、そしてこの配列を既知のヘパリン結合領域と比較することにより、MIPIのこの部分がヘパリン結合活性を有すると結論した。(USP01010935)

    $$ The signal can also be used if stored for assessing the condition of the motor/pump system by comparison of performance over time. (USP6132010)

                            目次はこちら

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  • COMPARISON OF

                            目次はこちら

    COMPARISON OF

    –> comparison between / with

    $$ As can be clearly seen from a comparison of the clock data patterns in steps 1 and 4, the clock data 4 for track n+1 is delayed by a time T relative to the clock data 1 for track n. / 段階1と段階4のクロックデータパターンの比較から明らかに分かるように、トラックn+1のクロックデータ4は、トラックnのクロックデータ1に比べて時間Tだけ遅れている。(USP6172830)

    $$ The comparison of the fingerprints enables the test disc to be authenticated. / 指紋の比較は、テストディスクを認証することを可能とする。(USP6560176)

    $$ As can be seen from a comparison of FIGS. 11 and 12, the grid 52 in FIG. 12 is more dense than the grid 52 in FIG. 11. (USP5774571)

    $$ Embodiments of the present invention enable two or more keywords within a data set to be associated with each other, for example keywords that form a phrase, with the result that the accuracy in comparison of similarity of data sets may be improved. / この発明の実施態様はデータ組内部で2以上のキーワードが互いに他と関係づけられるようにしており、例えば語句(フレーズ)を形成し、データ組の類似性の比較の精度が改善されるような結果をもたらしている。(USP6353827)

    $$ A comparison of FIGS. 4 and 6 will show that six of the events selected by the operator for prediction set out in the line 50 are displayed on the display of FIG. 6. (USP6287199)

    $$ As will be apparent from a comparison of FIG. 9A and FIG. 9B, the message PKTMSG_GROUP_LOGON is equivalent to both the logon and the logon_ack messages of FIG. 9A. (USP02018462)

    $$ Nonetheless, it is apparent from comparison of FIGS. 20 and 21 that the scene has been portrayed with good accuracy in the virtual image. (USP6327381)

    $$ We have determined by experimentation and by comparison of this sequence with known heparin binding regions that this portion of MIP1 has heparin binding activity. / 我々は、実験により、そしてこの配列を既知のヘパリン結合領域と比較することにより、MIPIのこの部分がヘパリン結合活性を有すると結論した。(USP01010935)

    $$ The signal can also be used if stored for assessing the condition of the motor/pump system by comparison of performance over time. (USP6132010)

                            目次はこちら

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  • Now a Big Company Wants You to Take a Patent License…

    This is going to be a different ride Most high technology companies have a good grasp of the challenges and solutions for dealing with patent trolls. However, successful high technology startups face a threat beyond patent trolls: large corporate patent asserters looking to license their patents. Companies like Microsoft, Qualcomm, and IBM regularly assert their […]

    The post Now a Big Company Wants You to Take a Patent License… appeared first on IPWatchdog.com | Patents &…

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  • Judge Newman dissent on construction of claim terms with a plain and ordinary meaning

    In Nobelbiz, the CAFC reversed ED Texas on claim construction:


    Global Connect, L.L.C. and T C N, Inc. (collectively,
    the Defendants) appeal from a jury verdict finding they
    infringed U.S. Patent Nos. 8,135,122 and 8,565,399.
    Because the district court erred in its claim construction,
    we reverse and remand.

    Footnote 1 addresses the dissent by Judge Newman:


    Contrary to the dissent’s characterization, this is
    not merely a factual question of infringement. In our
    claim construction, we do not examine the Defendants’
    system, but focus on the intrinsic record: the claims, the
    specification, and the prosecution history. The scope of
    patent claims will always affect infringement, but the
    meaning of the claim language remains a legal issue to be
    determined by the judge, not the jury.

    Judge Newman’s dissent begins


    It is not reversible error for the district court to decline
    to “construe” terms that have a plain and ordinary
    meaning as used in the patent. See Summit 6, LLC v.
    Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015)
    (“[E]ach [term] is used in common parlance and has no
    special meaning in the art. Because the plain and ordinary
    meaning of the disputed claim language is clear, the
    district court did not err by declining to construe the
    claim term.”).
    The panel majority holds that the term “replacement
    telephone number” should be construed as “a telephone
    number that substitutes for an original telephone number,”
    Maj. Op. at 7; the term “modify caller identification
    data” should be construed as “change caller identification
    data,” id.; and the term “outbound call” in the clause
    “transmit the caller identification data to the call target
    in connection with the outbound call” should be construed
    as “a call placed by an originator to a target,” id. at 9. We
    are not told how these corrected definitions could have
    changed the result at trial.
    There is no obligation for a district court to construe
    straightforward terms whose meaning and scope are
    readily understood. Summit 6, 802 F.3d at 1291. Infringement
    in this case is not a product of arcane claim
    language. See, e.g., Lazare Kaplan Int’l, Inc. v. Photoscribe
    Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010)
    (“This court agrees with the Defendants that the parties’
    dispute concerns factual questions relating to the test for
    infringement and not the legal inquiry of the appropriate
    scope of the ‘positional accuracy’ limitation.”).

    (…)

    The decision of this case invokes the tension between
    deciding factual questions of infringement and converting
    such factual aspects into legal issues of claim construction.
    See Function Media, L.L.C. v. Google, Inc., 708 F.3d
    1310, 1326 (Fed. Cir. 2013) (comparing dispute over the
    “scope of the claims” and “post-trial attempts to recharacterize
    improper arguments as issues of claim
    construction.”). See generally GPNE Corp. v. Apple Inc.,
    830 F.3d 1365, 1373 (Fed. Cir. 2016) (“At bottom, then,
    GPNE’s complaint rests not with the district court’s
    failure to define claim scope, but with its allowing Apple
    to make certain arguments to the jury.”).
    The district court declined to decide the question of infringement
    by way of claim construction. The court stated
    that “the Court is not persuaded that it should limit the
    independent claims to Defendants’ ‘catch and release’
    construction given the intrinsic evidence,” Dist. Ct. Op at
    *8, and allowed the question of infringement to be presented
    to the jury. I do not discern reversible error in this
    procedure. See, e.g., Verizon Servs. Corp. v. Cox Fibernet
    Virginia, Inc., 602 F.3d 1325, 1334 (Fed. Cir. 2010)
    (“While Verizon attempts to characterize the issue as one
    of claim construction, its argument is more accurately
    about whether Cox’s arguments to the jury about the
    distinction between how its system works and the Internet
    were improper . . . .”).

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  • Comments on inherency in the Millennium decision [ 2017 U.S. App. LEXIS 12702 ]

    Dennis Crouch took issue with the inherency portion of the Millennium decision [ 2017 U.S. App. LEXIS 12702 ]:


    The easy part of the decision for the district court focused-in on the motivation to combine boronate and mannitol. The district court found that an Adams Patent “pointed directly to mannitol” for the combination. However, according to the Federal Circuit, “the Adams Patent’s fail[s] to mention mannitol.”

    In my view, this easy-part is sufficient for the patentee to win, and my preference would be for the court to delete the rest of its muddled opinion – and instead rest its case on the lack of the motivation to combine. The remainder of the decision is somewhat difficult to follow because it jumps back and forth dancing around but never answering the basic question: If the combination would have been obvious to try, would its natural result also be considered obvious? At times, the court appears to agree that obviousness would follow, while other sections of the opinion suggest the compound would not have been obvious since its actual structure was so unexpected.
    (…)
    On the topic of inherency in particular, the court seems to have simply strung together several loosely related sentences. Take the following pair as an example:

    Sandoz argues that although lyophilization in the presence of mannitol produced an unexpected result, the result was “inevitable” and thus “inherent,” and thus not “inventive.” However, invention is not a matter of what the inventor intended when the experiment was performed; obviousness is measured objectively in light of the prior art, as viewed by a person of ordinary skill in the field of the invention . . .

    In the end, the reversal makes sense, but the law created is somewhat of a mess.

    link: https://patentlyo.com/patent/2017/07/inherent-unexpected-obvious.html

    To be clear, from Judge Newman’s opinion:


    The district court held that the claims were obvious because they were the inherent result of an allegedly obvious process, viz., lyophilizing bortezomib in the presence of the bulking agent mannitol. Millennium argued that a person of ordinary skill would avoid lyophilization in developing a formulation involving bortezomib because “bortezomib was known to be unstable even in the dry state as a freestanding solid compound.” Dist. Ct. Op. *6. The court was not persuaded by this argument and instead relied on the testimony of Sandoz’s witness, Dr. Repta, to find that, as of the ‘446 Patent’s priority date, lyophilization “was well-known in the field of formulation” and that it was considered an obvious alternative “when a liquid formulation provided limited success.” Id.
    (…)
    the district court held the claims invalid on the ground of obviousness, agreeing with Sandoz that “Millennium conceded as a matter of law that the ester is the ‘natural result’ of freeze-drying bortezomib with mannitol.” Id. at *8. The court reasoned that the “natural result” of a chemical procedure is inherent in the procedure, and thus the product thereof “would have been obvious to a person of ordinary skill,” in the words of § 103.

    (…)

    The district court also clearly erred in its consideration of inherency in the case.”A party must . . . meet a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis.” Par Pharm., 773 F.3d at 1195-96. “The mere fact that a certain thing may result from a given set of circumstances is not sufficient” to render the result inherent. In re Oelrich, 666 F.2d at 581 (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 26 C.C.P.A. 937, 1939 Dec. Comm’r Pat. 327 (CCPA 1939)).

    (…)

    Sandoz argues that although lyophilization in the presence of mannitol produced an unexpected result, the result was “inevitable” and thus “inherent,” and thus not “inventive.” Sandoz Br. at 1, 12-17. However, in the case.invention is not a matter of what the inventor intended when the experiment was performed; obviousness is measured objectively in light of the prior art, as viewed by a person of ordinary skill in the field of the invention. “Those charged with determining compliance with 35 U.S.C. § 103 are required to place themselves in the minds of those of ordinary skill in the relevant art at the time the invention was made, to determine whether that which is now plainly at hand would have been obvious at such earlier time.” Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985). No expert testified that they foresaw, or expected, or would have intended, the reaction between bortezomib and mannitol, or that the resulting ester would have the long-sought properties and advantages.

    Separately, Kevin Noonan wrote:


    The opinion suggests that obviousness requires the art to provide a reason for taking the particular experimental route leading to the claimed success, as well as a reasonable expectation of achieving that success. Instances, as here, where the result is unforeseen and serendipitous cannot satisfy these criteria.

    As for the purported “inherency” of the outcome relied upon by the District Court in its reasoning, the panel found that the District Court had erred in agreeing with Sandoz that, because the result (the claimed bortezomib-mannitol ester) was “inevitable” it was also inherent, and therefore could not be inventive (in the archaic meaning of that term, i.e. non-obvious). The error stems from the principle that the inventor’s intention is not the relevant consideration; it is whether the invention would have been objectively obvious to one of ordinary skill in the art. Here, there was no evidence that anyone “foresaw, or expected, or would have intended, the reaction between bortezomib and mannitol, or that the resulting ester would have the long-sought properties and advantages” and hence the invention was non-obvious.

    link: http://www.patentdocs.org/2017/07/millennium-pharmaceuticals-inc-v-sandoz-inc-fed-cir-2017.html

    IPBiz notes that obviousness relates to that which is known or reasonably foreseeable. Inherency (in an anticipation context) does NOT require this. In Millennium, the formation of, and the inherent properties of, the bortezomib-mannitol ester were not known or reasonably foreseeable. On these facts, the mere invocation of inherency was legal error.

    As pointed out in a 2012 post in IPBiz on In re Daniels:


    Appellants are correct insofar as that a retrospective (retroactive or backwards) employment of inherency by the Solicitor is incorrect in a § 103 analysis. Appellants are also correct that employment of inherency is incorrect in a § 103 analysis when it is not known in the art that the inherent part is in fact inherent. Newell, 891 F.2d at 899 quoting In re Spormann, 363 F.2d 444 (C.C.P.A. 1966), (“That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”).

    See Inherency in an obviousness rejection
    See also RIJCKAERT, 9 F.3d 1531

    Although one can discuss “objectively obvious,” the key analytical point is whether the compound and its properties were known (or reasonably foreseeable).

    Also:

    http://ipbiz.blogspot.com/2014/12/anticipation-is-not-epitome-of.html

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  • Breadth through Specificity: Supporting Alternative Embodiments with Multiple Examples in Patent Applications

    Two recent cases, The Medicines Co. v. Mylan, Inc and Skedco, Inc. v. Strategic Operations, Inc., illustrate that the patentee’s specification is key to determining whether an alleged infringer has practiced an alternative embodiment or a non-infringing invention… The specifications at issue in Skedco and Medicines took different approaches to the phrasing of example components, and thus led to different results against infringers. The CAFC in Skedco used several example embodiments in the…

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