• Reversing vs. Vacating PTAB Decisions

    By Dennis Crouch In re Hodges (Fed. Cir. 2018) In a split opinion, the Federal Circuit has rejected the PTAB’s anticipation and obviousness decisions – finding that the Board erred in holding that the key prior art reference inherently disclosed the an “inlet seat” defined by a “valve body” of the claimed drain assembly. Anticipation […]

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  • Federal Circuit Upholds Thales Motion Tracking Patent Asserted against U.S. Government for Second Time

    The recent Federal Circuit decision in Elbit Systems of America, LLC v. Thales Visionix, Inc. affirmed a final written decision issued by the Patent Trial and Appeal Board (PTAB), which upheld some claims in an inter partes review (IPR) proceeding challenging the validity of Thales’ U.S. Patent No. 6474159, titled Motion-Tracking and issued in November 2002. The patent claims a system for tracking the motion of an object relative to a moving reference frame using a first inertial sensor mounted…

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  • AST acquires 70 patent assets in fixed price, fixed term buying program

    AST, a provider of proactive patent risk mitigation solutions, recently announced the results from IP3 2017, a fixed price, fixed term, collaborative patent buying program. Launched this past August, IP3 2017 gave sellers an easy way to access the secondary market by streamlining the process of selling patents with a fixed price, rapid response model. […]

    The post AST acquires 70 patent assets in fixed price, fixed term buying program appeared first on IPWatchdog.com | Patents &…

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  • Ex parte Kotanko (PTAB 2018)

    By Donald Zuhn –- In an interesting decision issued last year, the Patent Trial and Appeal Board reversed the final rejection of claims 1-5 and 9 in U.S. Application No. 12/959,017. The claims at issue had been rejected under 35 U.S.C. § 101 as reciting patent ineligible subject matter in the form of an abstract idea, and under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No. 6,454,707 and U.S. Patent Application Publication Nos. US 2006/0226079 A1 and US 2009/0082684 A1. This post addresses the Board’s reversal of the § 101 rejection. The ‘017 application relates to the…

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  • Appellant Kenneth Hodges prevails at CAFC

    The appellant Hodges got some traction at the CAFC:

    Appellant Kenneth Andrew Hodges appeals from examination
    of U.S. Patent Application No. 12/906,222
    (“’222 application”), in which the Patent Trial and Appeal
    Board (“Board”) affirmed the examiner’s rejection of all
    claims as anticipated and/or obvious. See Ex Parte Kenneth
    Andrew Hodges, No. 2014-009710, 2016 WL 6441834
    (P.T.A.B. Oct. 28, 2016). For the following reasons, we
    reverse the Board’s anticipation determinations, vacate
    its obviousness determinations, and remand for further

    There was an “inherent” argument in the Examiner’s
    anticipation rejection:

    Thus, as the Board noted, the propriety of the examiner’s
    rejection turns on whether Rasmussen’s unlabeled
    valve containing the inlet seat is “define[d]” by Rasmussen’s
    valve body—i.e., whether it “can properly be consid-
    ered to be a part of Rasmussen’s drain valve body.”
    Hodges, 2016 WL 6441834, at *2. The Board found that it
    could. In particular, the Board found that Rasmussen’s
    unlabeled valve is “connected to, and therefore allow[s] or
    prevent[s] flow into, inlet port 17A,” and that the seat of
    the unlabeled valve would therefore “be ‘an internal part’
    of and contained within the ‘outer casing’ of drain valve
    10.” Id. That finding is unsupported by substantial


    The Board neither supported its assertion of
    similarity, however, nor explained how the positioning of
    the unlabeled valve in Rasmussen’s Figure 7 would enable
    a skilled artisan to “practice the invention without
    undue experimentation.” Spansion, 629 F.3d at 1356
    (internal quotation marks omitted). And, even if Rasmussen’s
    unlabeled valve is ostensibly “similar to” the ’222
    application’s second member 16 in some respects, it is
    different in the only respect that is relevant to the claims
    at issue—i.e., it is not an internal part of or contained
    within the valve body. We therefore conclude that substantial
    evidence does not support the Board’s anticipation

    Of note:

    The Patent Office shoulders the burden during initial
    examination of establishing that the examined claims are
    anticipated. See 35 U.S.C. § 102 (“A person shall be
    entitled to a patent unless[] . . . .”); cf. In re Oetiker, 977
    F.2d 1443, 1445 (Fed. Cir. 1992) (“If examination at the
    initial stage does not produce a prima facie case of unpatentability,
    then without more the applicant is entitled
    to grant of the patent.”). Because the Board failed to meet
    that burden here, and because the only permissible finding
    that can be drawn from Rasmussen is that it does not
    disclose the claim limitation at issue, we reverse the
    Board’s anticipation determination with respect to Rasmussen
    as to appealed claims 1–3 and 5–8.

    Footnote 7:

    The dissent asserts that we may reverse the
    Board’s patentability determinations in only two circumstances—i.e.,
    when the Board (1) “committed legal error
    and no further factual findings are required,” or (2) “made
    erroneous factual findings and only one permissible
    factual finding exists.” Dissent at 2–3 (internal quotation
    marks omitted). Whether or not the dissent is correct
    that these are the only two circumstances in which reversal
    is permitted, its conclusion that this case does not fit
    within the second circumstance is incorrect. As described
    above, the Board’s finding that the inlet seat within
    Rasmussen’s unlabeled valve is contained in Rasmussen’s
    housing is plainly contrary to the only permissible factual
    finding that can be drawn from Rasmussen itself. This
    case therefore fits squarely within the second circumstance
    identified by the dissent.


    We therefore reverse the Board’s anticipation determination
    based on Frantz as to appealed claims 1–2 and
    21. See Smith, 871 F.3d at 1382–84 (reversing the
    Board’s anticipation finding predicated on an unreasonably
    broad claim construction); In re Skvorecz, 580 F.3d
    1262, 1267–68 (Fed. Cir. 2009) (reversing the Board’s
    rejection of reissue claims predicated on an incorrect
    construction, and noting that “[a]nticipation cannot be
    found, as a matter of law, if any claimed element or
    limitation is not present in the reference”).

    Of obviousness:

    The Board concluded in a single paragraph that the
    claims would have been obvious over Rasmussen in view
    of Frantz because the unlabeled valve depicted in Rasmussen’s
    Figure 7 could be made part of Rasmussen’s
    drain valve body such that the seat of the unlabeled valve
    would be “‘an internal part’ of and contained within the
    ‘outer casing’ of drain valve 10.” Hodges, 2016 WL
    6441834, at *5. But the Board did not explain how Rasmussen’s
    drain valve assembly could be so modified. In
    another paragraph, the Board agreed with the examiner
    that it also “would have been obvious to a skilled artisan
    to include Rasmussen’s sensor in Frantz’s valve body for
    the purposes of generating a control signal that purges a
    high condensate level from Frantz’ [sic] [main] chamber.”
    Id. (internal quotation marks omitted). But the Board did
    not explain how such a sensor would be downstream of
    the inlet seat and generate a signal reflective of a pressure
    downstream of said inlet seat, as required by the
    claims. Instead, the Board merely determined that the
    claims would have been obvious over Frantz in view of
    Rasmussen “[f]or the same reasons as presented above.”
    Id. The Board made no findings, moreover, regarding the
    obviousness factors laid out in Graham v. John Deere Co.
    of Kan. City, 383 U.S. 1 (1966).
    Our review of the Board’s decision “is rooted not just
    in the law of obviousness but in basic principles of administrative
    law.” Personal Web Techs., LLC v. Apple, Inc.,
    848 F.3d 987, 992 (Fed. Cir. 2017). The Board must
    therefore “explicate its factual conclusions, enabling us to
    verify readily whether those conclusions are indeed supported
    by ‘substantial evidence’ contained within the
    record.” Gartside, 203 F.3d at 1314; see also Power Integrations,
    Inc. v. Lee, 797 F.3d 1318, 1326–27 (Fed. Cir.
    2015) (holding that the Board’s reasoning must be set out
    “in sufficient detail to permit meaningful appellate review”).
    The Board did not do so here. Unlike the Board’s
    anticipation determinations, which contravene the only
    permissible findings that can be drawn from the prior art
    under the proper constructions of the relevant claim
    terms, the Board’s obviousness determinations involve
    “potentially lawful but insufficiently or inappropriately
    explained” factual findings, In re Van Os, 844 F.3d 1359,
    1362 (Fed. Cir. 2017)

    When faced with similarly deficient factual findings,
    “we have consistently vacated and remanded for further
    proceedings.” Id. (collecting cases); Icon Health & Fitness,
    Inc. v. Strava, Inc., 849 F.3d 1034, 1046 (Fed. Cir. 2017)
    (“Although the [Board] made a factual finding, this finding
    did not have an adequate basis in the record, and the
    [Board] did not adequately explain its reasoning. Thus,
    we vacate and remand for additional [Board] findings and
    explanation.”); Personal Web Techs., 848 F.3d at 994
    (vacating and remanding “for the Board to reconsider the
    merits of the obviousness challenge, within proper procedural
    constraints”); see also Fla. Power & Light Co. v.
    Lorion, 470 U.S. 729, 744 (1985) (explaining that, when
    an agency’s fact-findings and explanation are deficient,
    “the proper course, except in rare circumstances, is to
    remand to the agency for additional investigation or
    We therefore vacate the Board’s obviousness rejections
    with respect to appealed claims 1–3, 5–8, and 21,
    and remand for further factual findings and explanation
    on this score.

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  • The Federal Circuit Reverses and Vacates Invalidity Determinations by the Board After Lack of Substantial Evidence Supported the Board’s Findings

    IN RE: HODGES: February 12, 2018.  Before Lourie, O’Malley, and Wallach. Takeaway: While the “broadest reasonable interpretation” standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description. The Board must …

    The post The Federal Circuit Reverses and Vacates Invalidity Determinations by the Board After Lack of Substantial Evidence Supported the Board’s Findings appeared first on CAFC Blog .

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  • Damages and Profits?

    David Brodsky has posted an article on ssrn titled General Damages and an Account of Profits ‒ An Irish Innovation?, JIPLP (forthcoming 2018).  Here is a link, and here is the article:
    This article considers the ‘orthodox’ rule requiring an election between damages or an account of profits in light of a recent Irish court decision that would appear to open the door for the granting of both remedies.

    Following a brief review of the background and historical development of the ‘orthodox’ view, the specific judicial arguments underlying the decision are presented. The crux of the judge’s reasoning centred on the distinction between special and general damages. Interpreting these terms in the manner set forth by the Irish Supreme Court for trade mark/passing off cases, the judge concluded that the ‘rule’ requiring a plaintiff to make an election between the two remedies refers to an election between special damages and an account of profits, so that nothing precludes a plaintiff from making a claim for general damages and an account of profits.

    The article shows that the legal and economic logic underlying the judgment is not easily refuted. Moreover, at least in certain situations the ‘orthodox’ position can be seen to send a clear, albeit unintended, signal to potential infringers that they need not worry unduly about the quality of their workmanship, or tarnishing the victim’s trade mark or reputation.  

    The basic idea is that an award of the infringer’s profit substitutes for “special” damages (lost profits, that is, profits actually lost on sales that would have been made but for the infringement) but not for “general” damages (injury to goodwill or reputation, which the author views as, in economic terms, encompassing more of a future harm yet to be suffered), and thus that there is no discrepancy between granting an award of infringer’s profits and an award of general damages.  The author notes, however, that the infringer’s profits could be greater or less than the plaintiff’s lost profits, and that the plaintiff typically will seek whichever form of relief offers a higher payout.  So I would be concerned that an award of infringer’s profits coupled with general damages for harm to reputation would result in overcompensation and, potentially, overdeterrence.  Of course, if there is reason to think that compensatory damages won’t provide sufficient deterrence in a given type of case, there may be good economic reasons to award enhanced damages or, if that option isn’t available in a particular country, an award of the infringer’s profits instead.  But I’d still be wary about adding general damages on top of that; I don’t see why an award of infringer’s profits should be viewed as compensatory damages at all, though I recognize that courts in some countries (e.g., Japan) do continue to invoke that premise.

    To be sure, the situation the author describes may not come up much in patent, as opposed to trademark, cases.  (He notes as well that in the case he’s discussing, the judgment was later reversed on liability, so Justice Cregan’s statements about damages are dicta.  Here‘s a link to Justice Cragen’s opinion, by the way, in case you’re interested.)  But there may be cases in which patent owners can make a reasonable case that the infringement has injured their reputation or caused some other less tangible harm.  See, e.g., Ronen Avraham’s recent article arguing for pain-and-suffering damages in patent cases (a view I don’t particularly share, however), which I mentioned here , and some of my previous posts on damages for “moral prejudice” in patent law (see, e.g., here and here).  So the issue Mr. Brodsky discusses could in theory come up in a patent case too, and if so it will be interesting to see if other courts find the Irish judge’s reasoning persuasive.

    For a discussion of a recent Canadian case holding (not surprisingly) that the defendant cannot elect between damages and an accounting of profits, see Norman Siebrasse’s Friday post on Sufficient Description.

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