• Supreme Court on the On Sale Bar

    by Dennis Crouch

    The Supreme Court has granted Helsinn’s petition for writ of certiori in the first case focusing on the 2011 rewriting of the prior art and novelty statute 35 U.S.C. 102.

    Issue: Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.

    Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., Docket No. 17-1229.  Expect a hearing this fall and a decision early 2019.

    A major focus of discussions surrounding the AIA first-to-file provisions was to limit prior art to objective and publicly available references.  However, Congress did not expressly alter the “on sale” bar language that has been used as a source for the rule that an inventor’s pre-filing secret sales activities (or other commercializing uses) will bar later patenting.

    My initial expectation is that the Federal Circuit decision will be affirmed — with a holding that Congress did not intend to overrule 190 year old Supreme Court precedent.  But, the conventional wisdom in patent cases is that the Supreme Court does not ordinarily grant certiorari in order to affirm the Federal Circuit.

    Continue reading Supreme Court on the On Sale Bar at Patently-O.

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  • The False Hope of WesternGeco

    The Supreme Court issued its opinion in WesternGeco last week. The holding (7-2) was relatively straightforward: if an infringer exports a component in violation of 35 USC 271(f)(2) (that is, the component has no substantial noninfringing use), then th…

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  • Phonetic symbol system fails under 35 USC 101

    The outcome of In re Wang:


    The invention claimed in the ’680 application relates
    to “[a] phonetic symbol system formed by phonetic symbols
    using letters of [the] English alphabet.” ’680 application,
    Abstract, Appx. 18. The specification distinguishes
    the claimed invention from existing phonetic symbol
    systems that use diacritic marks and symbols that are not
    letters. Id., Appx. 19. Embodiments described in the ’680
    application map letters to sounds. Id., Appx. 21–30. For
    example, “a” represents the “a” sound in “about,” while “e”
    represents the “e” sound in “bed” and “aa” the “a” sound in
    “father.” Id., Appx. 21. Claim 1 is illustrative of the
    claimed invention.

    Because, as explained below, we
    agree with the Board that the application claims on
    appeal are directed to non-statutory subject matter, we
    affirm the Board’s decision. We do not reach the remaining
    issues decided by the Board.

    No additional inventive concept was found:

    Finally, where, as here, claims of a patent application
    recite an abstract idea, the question becomes whether
    they contain “additional features” that embody an “inventive
    concept,” so as to nevertheless make them patenteligible.
    Alice Corp. Pty. Ltd v. CLS Bank Int’l, 134 S. Ct.
    2347, 2357 (2014) (quoting Mayo Collaborative Servs. v.
    Prometheus Labs., Inc., 132 S. Ct. 1289, 1294, 1297
    (2012)). The application claims on appeal, however,
    contain no “additional features” of any kind embodying an
    inventive concept. The claims merely encompass strings
    of English letters representing sounds. In short, there is
    no inventive concept that rescues them from patent
    ineligibility.

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  • The Real IPR Gauntlet: What USPTO Statistics Don’t Show

    87.2% of patents in the study, per the table, were subjected to just 1 or 2 IPR petitions – so gang tackling is no big deal. But make this simple observation: If a patent is killed in its first IPR, it can’t possibly be considered for a second one. The USPTO keeps their denominator fixed (and too large), which artificially lessens the reported percentage of patents which have large numbers of petitions filed against them. The calculation shouldn’t be 55/4,376 = 1.3% because by the time a…

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  • The Real IPR Gauntlet: What USPTO Statistics Don’t Show

    87.2% of patents in the study, per the table, were subjected to just 1 or 2 IPR petitions – so gang tackling is no big deal. But make this simple observation: If a patent is killed in its first IPR, it can’t possibly be considered for a second one. The USPTO keeps their denominator fixed (and too large), which artificially lessens the reported percentage of patents which have large numbers of petitions filed against them. The calculation shouldn’t be 55/4,376 = 1.3% because by the time a…

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  • Influx of Trademark Applications at the USPTO Subsidized by Chinese Government, Include Doctored Product Images

    According to Eric Perrott, a trademark and copyright attorney with Gerben Law Firm, chatter among U.S. trademark officials and attorneys regarding the increase of potentially fraudulent Chinese applications became more serious about a year ago. At that time, people were noting an increase of applications from specific Chinese provinces including Shenzhen, considered by many to be the Silicon Valley of China. “There’s a clear pattern that you can tell with some of the applications,” Perrott…

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  • WesternGeco LLC v. ION Geophysical Corp. (2018)

    By Kevin E. Noonan and George “Trey” Lyons, III — On Friday, the Supreme Court reversed the judgment of the Federal Circuit in WesternGeco LLC v. ION Geophysical Corp. Justice Thomas (joined by Chief Justice Roberts and Justices Kennedy, Ginsburg, Alito, Sotomayor, and Kagan) held that, based on the “focus” of 35 U.S.C. § 284 of the Patent Act (the general damages provision) when read in light of domestic infringement under 35 U.S.C. § 271(f)(2) (barring exportation of components specifically adapted for a patented invention), a patent owner could recover lost foreign profits. The decision overruled the Federal Circuit’s general…

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  • Conference & CLE Calendar

    June 25-27, 2018 – Summit on Biosimilars (American Conference Institute) – New York, NY June 26, 2018 – “Means-Plus-Function Patent Claims: Treatment in Prosecution, Litigation and Post-Grant Proceedings” (Strafford) – 1:00 to 2:30 pm (EDT) June 26, 20…

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  • 消す

                            目次はこちら

    消す

    –>消火・消去・消失・消毒・消滅

    $$ Some acceptors do not themselves fluoresce but merely "quench" the fluorescence of the donor. / いくつかの受容体は、それ自体は蛍光を発することなしに、供与体の蛍光を「消光」しているのみである。(USP7652266): quench/消光

    $$ Digestion of antibodies to produce fragments thereof, particularly, Fab fragments, can be accomplished using routine techniques known in the art. / 抗体の消化による、その断片、特にFab断片の生成は、当該分野において知られている慣用的技術を使用して達成が可能である。(USP7615210): digest/消化

    $$ The engine is also provided with an exhaust silencer 3 and the usual working components including a fuel tank with carburettor. / エンジンは排気消音器3と、気化器付き燃料タンクを含む標準機器とを更に具備している。(USP7581381): silence/消音

    $$ However, the production of such frames is time consuming and requires great skill in producing the desired appearance. / しかしながら、このようなフレームの生成は時間を消費し、所望の外観を生成するのに非常に熟練した技術を必要とする。(USP6772122): consume/消費

    $$ However, relying on viewing the picture is time consuming and therefore undesirable. / しかし、画像を見ることに依存するのは時間を消費するために望ましくない。(USP6661373): consume/消費

    $$ Such a system suffers from a disadvantage that in operation the sacrificial anode is consumed and it must be renewed periodically. / そのようなシステムでは、作動中に犠牲アノードが消耗され、従って周期的に更新しなければならないという不都合がある。(USP5364511): consume/消耗

    $$ The substantial fuel consumption savings further reduce craft weight as well as installation and operating costs. / また、大幅な燃料消費の節約が、更に、船体重量並びに設置及び運転費用を低減させる。(USP6332818): consume/消費

                            目次はこちら

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  • Guest Post by Prof. Tim Holbrook: WesternGeco’s Implications for Patent Law and Beyond

    Guest post by Timothy Holbrook, Asa Griggs Candler Professor of Law at Emory University School of Law.  Professor Holbrook authored an amicus brief in WesternGeco v. Ion.

    When the Supreme Court agreed to review WesternGeco LLC v. ION Geophysical Corp., it was unclear how sweeping the decision would be. The case had clear implications for patent law. It would be the first time the Supreme Court had addressed patent infringement damages under 35 U.S.C. § 284 since its 1984 decision General Motors Corp. v. Devex Corp. The briefing and oral argument suggested the Court had some interest in assessing proximate cause in patent damages, an issue that has not been addressed by the Supreme Court or revisited by the Federal Circuit since its seminal en banc decision in Rite Hite Corp. v. Kelly Company Inc. Finally, beyond patent law, this case had implications for the Court’s jurisprudence on the presumption against extraterritoriality, particularly as to whether the presumption applies to remedial provisions.

    Ultimately, the Supreme Court wrote a narrow decision, expressly avoiding many of these broader issues. The opinion, however, does demonstrate a methodology for addressing these issues in the future.

    Continue reading Guest Post by Prof. Tim Holbrook: WesternGeco’s Implications for Patent Law and Beyond at Patently-O.

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  • Why the "Red Hen" restaurant episode shows need for distinctive trademarks; is Walter Shaub dead wrong about 5 CFR 2635.702(a)?

    The Red Hen restaurant in Swedesboro, New Jersey has been getting some nasty blowback because of the incident at the Red Hen restaurant in Lexington, Virginia.

    Related to an earlier IPBiz on the movie “The Other End of the Line,” [ YouTube videos and comments to blogs as prior art used by the USPTO? ] note the text in the post
    N.J. restaurant harassed after Va. eatery with same name boots Sarah Huckabee Sanders


    Operating Manager Elizabeth Pope noticed something strange on the restaurant’s Facebook page: tons of angry comments and reviews.

    “It was off the chart,” she said. “Then the hostess comes to me and says, ‘people are calling and yelling and swearing.'”

    **Various posts have discussed a tweet by Walter Shaub [@waltshaub], directed to Sarah Huckabee Sanders, concerning the event at the Red Hen in Lexington, Virginia:


    Sarah, I know you don’t care even a tiny little bit about the ethics rules, but using your official account for this is a clear violation of 5 CFR 2635.702(a). It’s the same as if an ATF agent pulled out his badge when a restaurant tried to throw him/her out.

    concerning Sarah’s tweet from @PressSec:

    Last night I was told by the owner of Red Hen in Lexington, VA to leave because I work for @POTUS and I politely left. Her actions say far more about her than about me. I always do my best to treat people, including those I disagree with, respectfully and will continue to do so

    For the record, 5 CFR § 2635.702(a) reads in total


    a) Inducement or coercion of benefits. An employee shall not use or permit the use of his Government position or title or any authority associated with his public office in a manner that is intended to coerce or induce another person, including a subordinate, to provide any benefit, financial or otherwise, to himself or to friends, relatives, or persons with whom the employee is affiliated in a nongovernmental capacity.

    Example 1: Offering to pursue a relative’s consumer complaint over a household appliance, an employee of the Securities and Exchange Commission called the general counsel of the manufacturer and, in the course of discussing the problem, stated that he worked at the SEC and was responsible for reviewing the company’s filings. The employee violated the prohibition against use of public office for private gain by invoking his official authority in an attempt to influence action to benefit his relative.

    Example 2: An employee of the Department of Commerce was asked by a friend to determine why his firm’s export license had not yet been granted by another office within the Department of Commerce. At a department-level staff meeting, the employee raised as a matter for official inquiry the delay in approval of the particular license and asked that the particular license be expedited. The official used her public office in an attempt to benefit her friend and, in acting as her friend’s agent for the purpose of pursuing the export license with the Department of Commerce, may also have violated 18 U.S.C. 205.

    Sanders tweeted after the event had been disclosed (by someone else) in public media, and after Sanders had left the Red Hen, as directed by the owner.

    Shaub, who merely invoked the regulation, did not marshal any evidence to support the idea that Sanders, through her tweet intended to coerce or induce another person, including a subordinate, to provide any benefit, financial or otherwise, to himself or to friends, relatives, or persons with whom the employee is affiliated in a nongovernmental capacity

    Posts discussing Shaub’s tweet:

    Former Ethics Chief Calls Sarah Sanders Tweet About Getting Booted from Red Hen ‘Clear Violation’ of Ethics Rules

    Valerie Richardson in the Washington Times: Obama administration official accuses Sarah Huckabee Sanders of ethics violation for Red Hen tweet

    ****TripAdvisor on Red Hen Lexington on June 25, 2018

    Message from TripAdvisor: Due to a recent event that has attracted media attention and has caused an influx of review submissions that do not describe a first-hand experience, we have temporarily suspended publishing new reviews for this listing. If you’ve had a firsthand experience at this property, please check back soon – we’re looking forward to receiving your review!

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