The Trump administration this week proposed drastic cuts in funding for international activities including foreign policy and global health in 2019, while further building up military and big business activities. Programs related to international activ…Continue Reading ...
The decision whether to secure technology using a trade secret or a patent hinges as much on the technology as it does on access to capital. Small companies need funding to commercialize new inventions. A patent provides a private property right that c…Continue Reading ...
Just a short entry today about an interesting new NBER paper by Bronwyn Hall (Berkeley Economics) and Christian Helmers (Santa Clara Business) (behind a paywall, sorry, though most academics can download for free). The question is what happened to pate…Continue Reading ...
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 […]Continue Reading ...
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, 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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In Novartis v. Lee (Fed. Cir. 2014), the Federal Circuit agreed with the USPTO that “time spent in a continued examination” does not count towards the three years the USPTO is allotted to examine a patent before if it must award Patent Term Adjustment (PTA) for “B” delay. Under the USPTO’s rules, filing a Request for Continued Examination…… Continue reading this entryContinue Reading ...
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…Continue Reading ...
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
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
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.
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”).
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,Continue Reading ...
“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.
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 …Continue Reading ...
A post titled Boston police sent Black History Month tribute to Red Auerbach and people were not happy contains the textBut nothing can ever truly be deleted on the Internet.IPBiz is not so sure. Vai Sikahema’s polemic “Rutgers is Wrong” seems to b…Continue Reading ...
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.Continue Reading ...
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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