• Standard Essential Patents, Antitrust and Market Power

    Antitrust agency communications, such as the EU Commission’s Horizontal Guidelines and the FTC/DOJ Licensing Guidelines underline that market power does not necessarily result from patent ownership as such. They contain, however, no specific language on standard-essential patents which are – if they are valid and truly standard-essential – different from other patents in that they must, by definition, be used in order to operate on the respective standard-based market. In Europe at least, it…

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  • Changes in Patent Language to Ensure Eligibility Under Alice

    When a rule becomes a target, it ceases to be a good rule.  In the three years since the Supreme Court issued its opinion in Alice, there have been positive changes to patent applications, but there remains a long-term risk that patent practitioners will use tricks to beat the Alice test.  Here, we focus on the changes to patent applications by drafters, as well as changes to patent applications that have issued since Alice… Previous analyses have reported that patent specification length has…

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  • Changes in Patent Language to Ensure Eligibility Under Alice

    When a rule becomes a target, it ceases to be a good rule.  In the three years since the Supreme Court issued its opinion in Alice, there have been positive changes to patent applications, but there remains a long-term risk that patent practitioners will use tricks to beat the Alice test.  Here, we focus on the changes to patent applications by drafters, as well as changes to patent applications that have issued since Alice… Previous analyses have reported that patent specification length has…

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  • 依存性

                            目次はこちら

    依存性

    (DEPENDENCY)
    $$ Time Dependency in Throughroute Trees / 貫通ルート木における時間依存性 (USP8249810)

    $$ The surface area depend…

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  • Reviewing Partial-Institution Decisions

    CRFD Research v. Matal (Fed. Cir. 2017) (Iron Dome) CRFD Research v. DISH Network (Fed. Cir. 2017) Hulu, Netflix, and Spotify v. CRFD Research (Fed. Cir. 2017) CRFD’s U.S. Patent  No. 7,191,233 has been challenged in four separate Inter Partes Review petitions – three of which were granted and reached final decision. Interestingly, the three decisions […]

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  • PTAB reversed in Hulu matter: To bar Hulu from pressing an argument it raised in a ground the Board found “redundant” and that it expressly incorporated into other proposed grounds of unpatentability on which the Board instituted would not only unfairly prejudice Hulu, …

    The decision was a mixture:


    Today we decide three appeals in companion cases
    from final written decisions of the United States Patent
    and Trademark Office (“PTO”) Patent Trial and Appeal
    Board’s (“Board”) inter partes reviews (“IPRs”) of U.S.
    Patent No. 7,191,233 (“the ’233 patent”), owned by CRFD
    Research, Inc. (“CRFD”). Iron Dome LLC v. CRFD Research,
    Inc., No. IPR2015-00055, 2016 Pat. App. LEXIS
    6855 (P.T.A.B. Apr. 22, 2016) (hereinafter “Iron Dome
    Final Written Decision,” Appeal No. 16-2198); DISH
    Network Corp. v. CRFD Research, Inc., No. IPR2015-
    00627, 2016 Pat. App. LEXIS 7567 (P.T.A.B. June 1,
    2016) (hereinafter “DISH Final Written Decision,” Appeal
    No. 16-2298); Hulu, LLC v. CRFD Research, Inc., No.
    IPR2015-00259, 2016 Pat. App. LEXIS 4340 (P.T.A.B.
    June 1, 2016) (hereinafter “Hulu Final Written Decision,”
    Appeal No. 16-2437). For the reasons stated below, we
    affirm the Iron Dome and DISH Final Written Decisions,

    but we reverse the Board’s determination on obviousness
    in the Hulu Final Written Decision.

    As to review:


    We review the Board’s factual findings for substantial
    evidence and its legal conclusions de novo. In re Gartside,
    203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Substantial
    evidence is something less than the weight of the evidence
    but more than a mere scintilla of evidence.” In re Mouttet,
    686 F.3d 1322, 1331 (Fed. Cir. 2012) (citing Gartside, 203
    F.3d at 1312). It is “such relevant evidence as a reasonable
    mind might accept as adequate to support a conclusion.”
    In re Applied Materials, Inc., 692 F.3d 1289, 1294
    (Fed. Cir. 2012) (quoting Consol. Edison Co. of N.Y. v.
    NLRB, 305 U.S. 197, 229 (1938)). We have jurisdiction
    over these appeals under 28 U.S.C. § 1295(a)(4).

    Of Hulu:


    Hulu appeals the Board’s determination in the Hulu
    Final Written Decision that (1) claims 1–3, 23, and 24 are
    not anticipated by Bates, (2) claims 1–6, 8–11, 23–25, and
    29–31 would not have been obvious over Bates and Chan;
    (3) claims 13, 14, 34, and 35 would not have been obvious
    over Bates and Zou; and (4) claims 15, 17–20, 36, and 38–
    41 would not have been obvious over Bates, Zou, and
    Chan. For the reasons stated below, we reverse the
    Board’s determinations of nonobviousness, …

    Hulu challenges the Board’s determination that various
    claims of the ’233 patent would not have been obvious
    on the grounds on which the Board instituted review. On
    appeal, the only claim limitation in dispute for these
    grounds is “transmitting a session history of said first
    device from said first device to a session transfer module
    after said session is discontinued on said first device.”
    ’233 patent, col. 9, ll. 35–37 (emphasis added). We conclude
    that the Board erred, both in how it performed its
    obviousness analysis and in the merits of its determination
    of nonobviousness.
    Hulu first contends the Board failed to conduct a separate
    analysis on obviousness as to each of the instituted
    grounds. Instead, according to Hulu, the Board improperly
    relied on its finding that Bates did not anticipate
    various asserted claims of the ’233 patent to support its
    finding of nonobviousness without considering whether
    Bates suggests transmission of session history after
    discontinuation.
    We agree that the Board legally erred in its treatment
    of Hulu’s obviousness challenge. Although Hulu raised
    separate arguments as to the obviousness of certain
    claims, the Board performed limited fact-finding in its
    obviousness inquiry, only examining the level of ordinary
    skill in the art and then relying primarily on its determination
    that Bates did not anticipate the challenged
    claims. Hulu Final Written Decision, at *28–31. But
    “[t]he tests for anticipation and obviousness are different.”
    Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364
    (Fed. Cir. 2008). As noted, anticipation is a question of
    fact, while obviousness is a question of law based on
    underlying factual findings. Kennametal, Inc. v. Ingersoll
    Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).

    AND


    We agree with Hulu that the Board erred on this
    point, as Hulu expressly incorporated this argument as
    part of other grounds of unpatentability on which the
    Board instituted trial.7 Hulu relies solely on the teachings
    of Bates to satisfy the transmitting limitation as to
    all asserted claims. The Board, in its discretion, elected
    to not institute review on Bates alone for redundancy
    reasons, but instituted review on obviousness grounds
    that include the only reference—Bates—cited in that
    ground. To bar Hulu from pressing an argument it raised
    in a ground the Board found “redundant” and that it
    expressly incorporated into other proposed grounds of
    unpatentability on which the Board instituted would not
    only unfairly prejudice Hulu, but would also raise questions
    about the propriety of the Board’s redundancy
    decision. As the parties agree, our obviousness analysis
    on this limitation is controlled by the teachings and
    suggestions of Bates, and the Board’s decision to not
    review the obviousness ground of Bates alone for redundancy
    reasons cannot control the breadth of the obviousness
    inquiry it took below, and that we must review here.

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  • DEFINITE DYSFUNCTION: LATEST ON FUNCTIONAL CLAIMING

    from IPO: Tune in to the IP Chat Channel™ tomorrow, 6 December at 2:00p.m. ET, to earn CLE and hear a sophisticated discussion of Functional Claiming After Mastermine v. Microsoft, a recent Federal Circuit decision that reversed a lower court’s finding of indefiniteness after finding the claims were not improperly simultaneously directed to both an […]

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