• Federal Circuit Reverses and Remands Board Decision Upholding Patentability

    In an appeal from an IPR in which the Board upheld the patentability of several patent claims, the Federal Circuit vacated the decision and remanded to the Board with instructions to consider the patentability of certain dependent claims… The patentability of independent Claims 1 and 17 was the sole basis for the Board’s decision in this appeal from the ’592 IPR; the Board did not separately address the dependent challenged claims. The holding of unpatentability of claims 1 and 17 in the ’728…

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  • Tim Flory and Peter Cummings Join Honigman’s Grand Rapids Office

    Honigman Miller Schwartz and Cohn LLP announced that IP partners Tim Flory and Peter Cummings will join its expanding Grand Rapids office. Their arrival comes as the firm doubles its Grand Rapids office space to take up most of the fourth floor of its current building, the recently renovated 300 Ottawa Avenue Building.

    The post Tim Flory and Peter Cummings Join Honigman’s Grand Rapids Office appeared first on IPWatchdog.com | Patents & Patent Law.

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  • The CAFC addresses "incorporation by reference" in Paice v. Ford Motor

    In 2017-1406 , the CAFC addressed appeal issues related to
    final written decisions in six inter
    partes review (“IPR”) proceedings, in which the Patent
    Trial and Appeal Board (“PTAB”) held certain challenged
    claims of U.S. Patent Nos. 7,237,634 (“’634 patent”) and
    8,214,097 (“’097 patent”) unpatentable.1

    The result in Paice v. Ford Motor:


    In particular, we vacate the Board’s obviousness determinations
    as they relate to the ’634 patent’s “electrical” claims
    and remand for the Board to determine whether those
    claims find written description support in the priority
    applications and the references incorporated therein. We
    affirm the Board’s obviousness determinations as to all
    other claims.

    Of the written description matter:


    For claims to be entitled
    to a priority date of an earlier-filed application, the application
    must provide adequate written description support
    for the later-claimed limitations. Id.; see also Progressive
    Cas. Ins. Co. v. Liberty Mut. Ins. Co., 625 F. App’x 552,
    558 (Fed. Cir. 2015). Here, Paice asserts that the ’817
    application incorporates by reference Severinsky, which
    itself provides the requisite written description support.5
    The Board rejected that argument, concluding that the
    ’817 application does not incorporate Severinsky, and that
    the electrical claim limitations lack written description
    support in the ’817 application standing alone. The
    threshold question on appeal, therefore, is whether the
    Board’s incorporation ruling is in error. We conclude that
    it is.

    Incorporation by reference provides “a method for integrating
    material from various documents into a host
    document[] . . . by citing such material in a manner that
    makes clear that the material is effectively part of the
    host document as if it were explicitly contained therein.”
    Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d
    1272, 1282 (Fed. Cir. 2000). “To incorporate material by
    reference, the host document must identify with detailed
    particularity what specific material it incorporates and
    clearly indicate where that material is found in the various
    documents.” Id. Whether and to what extent material
    has been incorporated by reference is a question of law
    that we review de novo. Harari v. Lee, 656 F.3d 1331,
    1334 (Fed. Cir. 2011). “[T]he standard of one reasonably
    skilled in the art should be used to determine whether the
    host document describes the material to be incorporated
    by reference with sufficient particularity.” Advanced
    Display, 212 F.3d at 1283.

    The ’817 application expressly incorporates Severinsky
    in the following passage:
    This application discloses a number of improvements
    over and enhancements to the hybrid
    vehicles disclosed in the inventor’s U.S. Pat. No.
    5,343,970 (the “’970 patent”) [Severinsky], which is
    incorporated herein by this reference. Where differences
    are not mentioned, it is to be understood
    that the specifics of the vehicle design shown in
    the ’970 patent are applicable to the vehicles
    shown herein as well.
    J.A. 11,174 (emphasis added) (also appearing in the
    issued ’634 patent at col. 10, ll. 40–47)

    The issue:


    The Board reached a contrary conclusion, however, by
    relying on the subsequent sentence in the passage, which
    states: “Where differences are not mentioned, it is to be
    understood that the specifics of the vehicle design shown
    in the ’970 patent are applicable to the vehicles shown
    herein as well.” According to the Board, this sentence
    limits incorporation to only those disclosures in Severinsky
    that are not different from disclosures in the ’817
    application. Because the Board found differences between
    Severinsky’s disclosures related to the electrical limitations
    and the ’817 application’s corresponding disclosures,
    the Board determined that Severinsky’s disclosures are
    not incorporated into the ’817 application. The Board’s
    conclusion is incorrect.

    How the CAFC reasoned that PTAB’s interpretation was incorrect:

    This statement provides an expedient way for
    the applicant to describe the invention vis-à-vis Severinsky
    without describing every feature of Severinsky that is
    subsumed within the invention.
    The sentence has no bearing, however, on the extent
    of incorporation. It refers only to the applicability of
    certain features of Severinsky’s invention to the ’817
    application’s purportedly new and improved hybrid vehicle,
    rather than to which textual portions of the Severinsky
    document are incorporated in the ’817 application.
    The applicability of a document’s disclosed features and
    the incorporation of the document itself are distinct
    concepts, and one does not imply the other. See Modine
    Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1553
    (Fed. Cir. 1996) (“[I]ncorporation by reference does not
    convert the invention of the incorporated patent into the
    invention of the host patent.”); see also Fifth Generation
    Comput. Corp. v. Int’l Bus. Machs. Corp., 416 F. App’x 74,
    80 (Fed. Cir. 2011) (agreeing that certain prior art references
    were incorporated into the host patent but disagreeing
    “that every concept of the prior inventions is
    necessarily imported into every claim of the later patent”);
    S. Clay Prods., Inc. v. United Catalysts, Inc., 43 F. App’x
    379, 383–84 (Fed. Cir. 2002) (finding incorporation notwithstanding
    the host patent’s criticism of the incorporated
    patent’s invention).

    In addition to a general criticism of PTAB’s interpretation of
    incorporation by reference, the CAFC noted:


    Even if the second sentence in the ’817 application’s
    incorporation clause could be read as a narrow incorporation,
    our holding in Harari v. Lee would foreclose the
    Board’s conclusion. The patent application at issue in
    Harari contained two incorporation clauses. In the first
    clause, the application stated that “[t]he disclosures” of
    two prior art applications “are hereby incorporate[d] by
    reference.” Harari, 656 F.3d at 1335. In the second
    clause, the application stated that only the “[r]elevant
    portions” of the disclosures are incorporated. Id. We held
    that the “broad and unequivocal language” of the first
    clause “incorporates the entire disclosures of the two
    applications,” and that the second clause’s narrower
    language did not diminish the scope of incorporation.

    Of Ford’s argument on Harari, the CAFC noted


    At oral argument before this court, Ford sought to distinguish
    Harari on grounds that, in that case, there were
    two incorporation clauses separated by several paragraphs
    of text, in contrast to this case, where the two
    sentences in dispute appear in a single incorporation
    clause. Oral Arg. at 26:45–27:12, Paice LLC v. Ford
    Motor Co. (No. 2017-1387), http://oralarguments.cafc.
    uscourts.gov/default.aspx?fl=2017-1387.mp3. According
    to Ford, the “juxtaposition of the two sentences back-toback”
    in the ’817 application would inform a skilled artisan
    that differences are not incorporated therein. Id. at
    27:53–28:20.
    Ford’s purported distinction of Harari on the basis
    that the incorporation clauses at issue were separated by
    text is not persuasive. We said nothing in Harari about
    the proximity of the incorporation clauses, predicating our
    holding instead on the “broad and unequivocal language”
    of the first incorporation clause, and notwithstanding that
    the incorporation “occurred during a discussion of” particular
    teachings. And, while we agree with Ford that
    Harari commands that incorporation clauses be read in
    context, we disagree that the sentences at issue here limit
    the scope of incorporation when so read. The ’817 application’s
    incorporation passage provides no nexus between
    the “differences” referenced in the second sentence and
    the incorporation referenced in the first sentence, in
    contrast to cases in which we have found incorporation to
    be limited.

    Also


    Ford also asserted for the first time at oral argument
    that our decisions in Callaway Golf Co. v. Acushnet Co.,
    576 F.3d 1331 (Fed. Cir. 2009), and Husky Injection
    Molding Systems Ltd. v. Athena Automation Ltd., 838
    F.3d 1236 (Fed. Cir. 2016), support the Board’s ruling.
    But, in both cases, we found that the incorporation clauses
    at issue did in fact incorporate the relevant passages of
    the prior art into the host documents. And, in any event,
    those cases are inapposite

    Of the remand

    The written description inquiry is a highly factintensive
    one that “requires fact findings this court is not
    permitted to make.” Bilstad v. Wakalopulos, 386 F.3d
    1116, 1126 (Fed. Cir. 2004); Union Oil Co. of Cal. v. Atl.
    Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000) (noting
    that “written description questions are intensely factual,
    and should be dealt with on a case-by-case basis, without
    the application of wooden rules”). We therefore remand
    for the Board to determine in the first instance whether
    the ’817 application, with Severinsky incorporated therein,
    supplies the requisite written description support for
    the ’634 patent’s electrical claims. In other words, the
    Board must consider Severinsky for that purpose on
    remand.7

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  • The CAFC addresses "incorporation by reference" in Paice v. Ford Motor

    In 2017-1406 , the CAFC addressed appeal issues related to
    final written decisions in six inter
    partes review (“IPR”) proceedings, in which the Patent
    Trial and Appeal Board (“PTAB”) held certain challenged
    claims of U.S. Patent Nos. 7,237,634 (“’634 patent”) and
    8,214,097 (“’097 patent”) unpatentable.1

    The result in Paice v. Ford Motor:


    In particular, we vacate the Board’s obviousness determinations
    as they relate to the ’634 patent’s “electrical” claims
    and remand for the Board to determine whether those
    claims find written description support in the priority
    applications and the references incorporated therein. We
    affirm the Board’s obviousness determinations as to all
    other claims.

    Of the written description matter:


    For claims to be entitled
    to a priority date of an earlier-filed application, the application
    must provide adequate written description support
    for the later-claimed limitations. Id.; see also Progressive
    Cas. Ins. Co. v. Liberty Mut. Ins. Co., 625 F. App’x 552,
    558 (Fed. Cir. 2015). Here, Paice asserts that the ’817
    application incorporates by reference Severinsky, which
    itself provides the requisite written description support.5
    The Board rejected that argument, concluding that the
    ’817 application does not incorporate Severinsky, and that
    the electrical claim limitations lack written description
    support in the ’817 application standing alone. The
    threshold question on appeal, therefore, is whether the
    Board’s incorporation ruling is in error. We conclude that
    it is.

    Incorporation by reference provides “a method for integrating
    material from various documents into a host
    document[] . . . by citing such material in a manner that
    makes clear that the material is effectively part of the
    host document as if it were explicitly contained therein.”
    Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d
    1272, 1282 (Fed. Cir. 2000). “To incorporate material by
    reference, the host document must identify with detailed
    particularity what specific material it incorporates and
    clearly indicate where that material is found in the various
    documents.” Id. Whether and to what extent material
    has been incorporated by reference is a question of law
    that we review de novo. Harari v. Lee, 656 F.3d 1331,
    1334 (Fed. Cir. 2011). “[T]he standard of one reasonably
    skilled in the art should be used to determine whether the
    host document describes the material to be incorporated
    by reference with sufficient particularity.” Advanced
    Display, 212 F.3d at 1283.

    The ’817 application expressly incorporates Severinsky
    in the following passage:
    This application discloses a number of improvements
    over and enhancements to the hybrid
    vehicles disclosed in the inventor’s U.S. Pat. No.
    5,343,970 (the “’970 patent”) [Severinsky], which is
    incorporated herein by this reference. Where differences
    are not mentioned, it is to be understood
    that the specifics of the vehicle design shown in
    the ’970 patent are applicable to the vehicles
    shown herein as well.
    J.A. 11,174 (emphasis added) (also appearing in the
    issued ’634 patent at col. 10, ll. 40–47)

    The issue:


    The Board reached a contrary conclusion, however, by
    relying on the subsequent sentence in the passage, which
    states: “Where differences are not mentioned, it is to be
    understood that the specifics of the vehicle design shown
    in the ’970 patent are applicable to the vehicles shown
    herein as well.” According to the Board, this sentence
    limits incorporation to only those disclosures in Severinsky
    that are not different from disclosures in the ’817
    application. Because the Board found differences between
    Severinsky’s disclosures related to the electrical limitations
    and the ’817 application’s corresponding disclosures,
    the Board determined that Severinsky’s disclosures are
    not incorporated into the ’817 application. The Board’s
    conclusion is incorrect.

    How the CAFC reasoned that PTAB’s interpretation was incorrect:

    This statement provides an expedient way for
    the applicant to describe the invention vis-à-vis Severinsky
    without describing every feature of Severinsky that is
    subsumed within the invention.
    The sentence has no bearing, however, on the extent
    of incorporation. It refers only to the applicability of
    certain features of Severinsky’s invention to the ’817
    application’s purportedly new and improved hybrid vehicle,
    rather than to which textual portions of the Severinsky
    document are incorporated in the ’817 application.
    The applicability of a document’s disclosed features and
    the incorporation of the document itself are distinct
    concepts, and one does not imply the other. See Modine
    Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1553
    (Fed. Cir. 1996) (“[I]ncorporation by reference does not
    convert the invention of the incorporated patent into the
    invention of the host patent.”); see also Fifth Generation
    Comput. Corp. v. Int’l Bus. Machs. Corp., 416 F. App’x 74,
    80 (Fed. Cir. 2011) (agreeing that certain prior art references
    were incorporated into the host patent but disagreeing
    “that every concept of the prior inventions is
    necessarily imported into every claim of the later patent”);
    S. Clay Prods., Inc. v. United Catalysts, Inc., 43 F. App’x
    379, 383–84 (Fed. Cir. 2002) (finding incorporation notwithstanding
    the host patent’s criticism of the incorporated
    patent’s invention).

    In addition to a general criticism of PTAB’s interpretation of
    incorporation by reference, the CAFC noted:


    Even if the second sentence in the ’817 application’s
    incorporation clause could be read as a narrow incorporation,
    our holding in Harari v. Lee would foreclose the
    Board’s conclusion. The patent application at issue in
    Harari contained two incorporation clauses. In the first
    clause, the application stated that “[t]he disclosures” of
    two prior art applications “are hereby incorporate[d] by
    reference.” Harari, 656 F.3d at 1335. In the second
    clause, the application stated that only the “[r]elevant
    portions” of the disclosures are incorporated. Id. We held
    that the “broad and unequivocal language” of the first
    clause “incorporates the entire disclosures of the two
    applications,” and that the second clause’s narrower
    language did not diminish the scope of incorporation.

    Of Ford’s argument on Harari, the CAFC noted


    At oral argument before this court, Ford sought to distinguish
    Harari on grounds that, in that case, there were
    two incorporation clauses separated by several paragraphs
    of text, in contrast to this case, where the two
    sentences in dispute appear in a single incorporation
    clause. Oral Arg. at 26:45–27:12, Paice LLC v. Ford
    Motor Co. (No. 2017-1387), http://oralarguments.cafc.
    uscourts.gov/default.aspx?fl=2017-1387.mp3. According
    to Ford, the “juxtaposition of the two sentences back-toback”
    in the ’817 application would inform a skilled artisan
    that differences are not incorporated therein. Id. at
    27:53–28:20.
    Ford’s purported distinction of Harari on the basis
    that the incorporation clauses at issue were separated by
    text is not persuasive. We said nothing in Harari about
    the proximity of the incorporation clauses, predicating our
    holding instead on the “broad and unequivocal language”
    of the first incorporation clause, and notwithstanding that
    the incorporation “occurred during a discussion of” particular
    teachings. And, while we agree with Ford that
    Harari commands that incorporation clauses be read in
    context, we disagree that the sentences at issue here limit
    the scope of incorporation when so read. The ’817 application’s
    incorporation passage provides no nexus between
    the “differences” referenced in the second sentence and
    the incorporation referenced in the first sentence, in
    contrast to cases in which we have found incorporation to
    be limited.

    Also


    Ford also asserted for the first time at oral argument
    that our decisions in Callaway Golf Co. v. Acushnet Co.,
    576 F.3d 1331 (Fed. Cir. 2009), and Husky Injection
    Molding Systems Ltd. v. Athena Automation Ltd., 838
    F.3d 1236 (Fed. Cir. 2016), support the Board’s ruling.
    But, in both cases, we found that the incorporation clauses
    at issue did in fact incorporate the relevant passages of
    the prior art into the host documents. And, in any event,
    those cases are inapposite

    Of the remand

    The written description inquiry is a highly factintensive
    one that “requires fact findings this court is not
    permitted to make.” Bilstad v. Wakalopulos, 386 F.3d
    1116, 1126 (Fed. Cir. 2004); Union Oil Co. of Cal. v. Atl.
    Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000) (noting
    that “written description questions are intensely factual,
    and should be dealt with on a case-by-case basis, without
    the application of wooden rules”). We therefore remand
    for the Board to determine in the first instance whether
    the ’817 application, with Severinsky incorporated therein,
    supplies the requisite written description support for
    the ’634 patent’s electrical claims. In other words, the
    Board must consider Severinsky for that purpose on
    remand.7

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  • 劣る

                            目次はこちら

    劣る

    (POOR)
    $$ Furthermore, the sheet material of U.S. Pat. No. 4,109,664 exhibits poor processability characteristics, i.e. brittleness, during sheet f…

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  • Some Upcoming Events on FRAND/SEP Issues

    1.  The American Bar Association (ABA) will be hosting a webinar on Friday, February 9, titled Update on Standard-Essential Patent Litigation in China, from 11:30-1 p.m. Eastern Time.  Speakers will be Fei Deng, Shan Jiao, Fang Qi, Su Sun, and Ye Zhao, moderated by Robert McNary.  Here is the description:
    China has become a hot litigation battlefield for SEP owners and prospective licensees.  The Shenzhen Intermediate People’s Court issued an injunction decision in Huawei v. Samsung earlier in January, while a number of cases such as Apple v. Qualcomm, Iwncomm v. Sony, and Iwncomm v. Apple, are just heating up.  Lawyers and economists will discuss their first-hand experiences litigating SEP cases in China.

    More information here.  Hat tip to the Antitrust & Competition Law Blog.
    2.  On March 6, WilmerHale UK will be hosting an event from 5:30 to 9:30 p.m. titled Global IP Litigation and the UK’s Future Role: A Discussion With Mr. Justice Birss.  Below is the description; I understand the event is free, but those planning to attend should register.

    WilmerHale is delighted to invite you to a seminar in which Mr. Justice Birss, a judge of the Patents Court, and now the Business and Property Courts Supervising Judge for the Midland, Wales and Western Circuits, will discuss the future role of the UK in global and European IP litigation proceedings.

    During what promises to be an interesting and lively evening, Mr. Justice Birss will address the UK’s position in global IP litigation. The Judge will also discuss the introduction of the Business and Property Courts, the UPC, the shorter and flexible trials schemes, and some specific aspects of current litigation strategy, including Arrow declarations and FRAND.

    Partners from WilmerHale’s London Intellectual Property Litigation team (Trevor Cook, Matthew Shade, Anthony Trenton and Justin Watts) and IP Litigation Group Co-Chair Mark Selwyn will chair and introduce the evening, and discuss global IP litigation and possible future forum shopping in the UPC.

    The seminar will be followed by drinks and canapés.

    3. The IP Chat Channelwill be hosting a webinar on Wednesday, February 28, titled FRAND Litigation After TCL v. Ericsson, from 2-3 pm Eastern Time.  I will be one of the speakers, along with Professor Jorge Contreras and Christopher Thomas of Hogan Lovells.  I will have more information soon.  Hat tip to me.
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  • Federal Circuit says Claims for Summarizing Information are Not Abstract

    The Federal Circuit affirmed the district court’s denial of LG‘s motion for summary judgment that various claims of Core’s patents were directed to patent ineligible subject matter under Section 101. The Court also affirmed the district court’s denial of LG’s motions for judgment as a matter of law that the claims were anticipated and not infringed… The concept of summarizing information can be patent eligible (not abstract) when specifically applied to improving the efficiency of the…

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  • TiVo Files Patent Lawsuits against Comcast, Only Major U.S. Pay-TV Provider Without a TiVo Patent License

    TiVo files patent lawsuits, the latest steps TiVo has taken in the hopes of resolving the renewal of a long-term licensing agreement that TiVo has already has already finalized with other major pay-television providers in the United States… TiVo’s recent litigation campaign against Comcast stems back to an unresolved licensing agreement that expired in April 2016 and which TiVo has attempted to renew with the major American pay-TV provider. Rovi first signed licensing agreements with the top…

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