• Inherent obviousness necessitates specific motivation to modify lead compound in pharma process due to surprising, unexpected results

    Inherent obviousness cannot be based on what the inventor thought, and, in addition, the results in a particular case may not be inherently obvious depending on what was expected by a person of ordinary skill. The court pointed out “’the mere fact that a certain thing may result from a given set of circumstances is not sufficient’ to render the results inherent.” Millennium Pharmaceuticals, 2017 WL 3013204, at *6 (citations omitted by author). The court also held that it is never appropriate…

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  • Federal Circuit Fails its Civil Procedure Test on Standing

    Personal Audio v. Electronic Frontier Foundation (EFF) (Fed. Cir. 2017) On appeal, the Federal Circuit has sided with the USPTO — affirming the IPR final judgment of unpatentability of Personal Audio’s US Patent No. 8,112,504.  The patent claims a system for “disseminating media … episodes in a serialized sequence.” The most interesting question addressed by the court is […]

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  • DESCRIBE / 記載する・記述する・説明する


    DESCRIBE / 記載する・記述する・説明する


    $$ The following sections will describe the respective layers of test strip 162 in more detail. / 次の段落から、検査ストリップ162の各層を詳細に説明する。(USP7653492)

    $$ British patent publication number 2285556 describes a personal base station which is compatible with the GSM system. / 英国特許公報第2285556号には、GSMシステムと互換性をもつパーソナル基地局が記載されている。(USP6826414)

    $$ This section may describe the present invention according to a preferred embodiment. (USP6691301)

    $$ In our International Patent Publication No WO 97/06836 we describe a switchable adhesive formulation. / 我々の国際特許公開公報第WO97/06836号において、我々は転換可能な接着剤の処方を記載している。(USP6610762)

    $$ It is therefore useful to be able to describe a wavefront shape in general terms. / 従って、波面形状を一般的に記述することができることは有用である。(USP6570143)

    $$ It does not describe the use or a smart card. (USP6501962)

    $$ U.S. Pat. No. 5,287,061 describes an on-line method of monitoring a detector for contamination. / 米国特許第5,287,061号には、汚れの検出をオンラインでモニタする方法が記載されている。(USP6489775)

    $$ We now describe the control protocol on the loop of FIG. 9. (USP6396815)

    $$ Examples 1 to 4 describe the preparation of the new metal organic compounds. / 実施例1~4は新規な金属化合物の製造を述べる。(USP6353047)

    $$ Ivanov et al. describes XRS2 of yeast. / Ivanovらは酵母のXRS2を記載している。(USP6242175)

    $$ Table 6 describes a sixth specific alert signal burst; / 表6は、第6の特定の警告信号バーストを示す。(USP6201470)

    $$ Describing linearity in this manner is commonly used by those skilled in the art. / この方法による直線性の記述は、当業者に広く使用されている。(USP7592943)

    $$ Describing each state by the v-tuple of data symbols: (an- 1,… an-v), ai .epsilon. [0, M-1], then there are M transitions emanating from each state, corresponding to the M possible values that the n-th data symbol can take. (USP6122269)

    $$ Describing now the piercing of capsules by the pins (367) held on either side of the rotary magazine (323), this also is achieved through the withdrawal of the handle (307) (or operation of the motor (307a)) and using the cam tracks (315). (USP5896855)


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  • ITC opens patent infringement investigation after Qualcomm files complaint against Apple

    On Tuesday, August 8th, the U.S. International Trade Commission (ITC) announced that it was opening up an investigation on claims that Cupertino, CA-based consumer electronics behemoth Apple Inc. (NASDAQ:AAPL) is infringing upon patented technologies, specifically baseband processor modems, in its mobile electronic devices. The investigation follows a Section 337 patent infringement complaint filed on July […]

    The post ITC opens patent infringement investigation after Qualcomm files…

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  • Decision on Attorney’s Fees Vacated and Remanded Because the District Court Used an Incorrect Standard and Made Multiple Errors

    ROMAG FASTENERS v. FOSSIL:  August 9, 2017.  Before Newman (concurring-in-part, dissenting-in-part), Dyk (majority), and Hughes.   Takeaway: The Lanham Act should have the same standard for recovering attorney’s fees as the Patent Act in light of Octane. In determining whether a case is exceptional for 35 U.S.C. § 285 fees, a district court …

    The post Decision on Attorney’s Fees Vacated and Remanded Because the District Court Used an Incorrect Standard and Made Multiple Errors appeared first on CAFC Blog.

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  • Federal Circuit: Standard for Awarding Attorney’s Fees Is the Same in Patent and Trademark Cases

    This morning the court issued an opinion in Romag Fasteners, Inc. v. Fossil, Inc., vacating a district court judgment granting attorneys’ fees under § 285 of the Patent Act and denying fees under § 1117(a) of the Lanham Act.  (The district court also awarded fees under the Connecticut Unfair Trade Practice Act (CUTPA), the propriety of which does not appear to be discussed in the Federal Circuit opinions.)  The author of the principal opinion is Judge Dyk, joined by Judge Hughes; Judge Newman concurs in part and dissents in part.
    This is the third time this case has come up on appeal.  In 2016, the Federal Circuit approved a reduction in damages due to laches (Romag’s delay in filing suit until the eve of the Christmas shopping season in 2010), see discussion here.  Earlier this year the Federal Circuit vacated and remanded this aspect of the opinion in light of the Supreme Court’s opinion in SCA Hygiene  that laches is no longer a defense to a claim for damages incurred within the statute of limitations.  This third appeal is all about attorneys’ fees.  Following a jury trial, the district court entered judgment for Romag on its claims for patent infringement, trademark infringement, and violation of CUTPA, relating to Fossil’s sales of handbags bearing allegedly infringing magnetic snap fasteners.  The court awarded fees in connection with the patent claim, finding the case to be “exceptional” under the Octane Fitness standard, but not for trademark infringement, based on the Second Circuit’s understanding that Lanham Act § 1117(a) permits awards of attorneys’ fees only for bad faith or fraudulent conduct.  (In a case like this one, the courts are supposed to apply regional circuit law to the non-patent issues, and here the case was litigated in the District of Connecticut, which is within the Second Circuit.)  The Federal Circuit, however, holds that after Octane Fitness the standard for awarding fees under the two statutes is identical:
    Before Octane, the Second Circuit allowed recovery of attorney’s fees under 15 U.S.C. § 1117(a) only if there was bad faith or willful infringement on the part of the defendants. . . . The question is whether this standard survives after Octane. There have been no Second Circuit decisions on this issue since Octane. . . .   [H]owever, there is intervening relevant Supreme Court authority which, we think, would lead the Second Circuit to follow other circuits which have held that the Octane standard applies to the Lanham Act. . . . 
    Since Octane was decided, the Third, Fourth, Fifth, Sixth, and Ninth Circuits have all held that the Octane “Court was sending a clear message that it was defining ‘exceptional’ not just for the fee provision in the Patent Act, but for the fee provision in the Lanham Act as well.” Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 315 (3d Cir. 2014) . . . .Indeed, no circuit has specifically considered Octane and then declined to apply it to the Lanham Act.

    This is unsurprising, as the language of the Patent Act and the Lanham Act for attorney’s fees is identical. Both statutes provide that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285; 15 U.S.C. § 1117(a). “[W]hen Congress uses the same language in two statutes having similar purposes, . . . it is appropriate to presume that Congress intended that text to have the same meaning in both statutes.” Smith v. City of Jackson, 544 U.S. 228, 233 (2005).

    The court therefore remands for the district court to reconsider the award of fees for trademark infringement.  Judge Newman joins in this aspect of the majority opinion. 
    On the question of fees for patent infringement, however, the majority (Judge Newman dissenting) also vacates and remands, holding that the district court erred in concluding (1) that Fossil had not withdrawn its anticipation and obviousness challenges until after judgment was entered; (2) that the district judge who presided over an earlier part of the litigation had found Fossil’s indefiniteness argument to be “woefully inadequate,” words that the panel majority believes were taken out of context; and (3) that the impact of Romag’s own conduct in delaying suit until shortly before the 2010 holiday season had been adequately addressed by the court’s refusal to award fees in connection with Romag’s motion for a TRO.  However, while the majority agrees with Romag that the district court’s denial of a plaintiff’s motion for judgment as a matter of law on the issue of infringement doesn’t preclude a finding that the defendant’s position was frivolous, the court finds that the district judge properly evaluated the strength of Fossil’s position and sees “no error in the district court’s refusal to consider this issue as an adverse factor in the totality of circumstances” (p.19).  Finally, the court sets aside an award of expert witness fees incurred in connection with Fossil’s motion for summary judgment on indefiniteness.
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