On the morning of Wednesday, July 11th, the House Small Business Committee held a hearing titled Innovation Nation: How Small Businesses in the Digital Technology Industry Use Intellectual Property. Though the witness panel was not quite as one-sided a…Continue Reading ...
The international police agency Interpol today announced that it coordinated a massive sweep of arrests and seizures of tons of fake goods across four continents in recent months.Continue Reading ...
A decent patent strategy starts with protecting your current commercial product. A better patent strategy builds on this by not only considering what is, but what could be. To provide real value, consider the actions of others and invest time studying the patent landscape and gathering business intelligence from competitors’ filings. Additionally, instead of passively observing such filings, a company should also consider being more active by filing one or more third-party submissions (often…
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By Donald Zuhn — Last month, in Illumina, Inc. v. Natera, Inc., District Judge Susan Illston of the U.S. District Court for the Northern District of California denied a motion to dismiss filed by Defendant Natera, Inc., to dismiss a complaint filed by Plaintiff Illumina, Inc. against Natera. Illumina initiated the dispute between the parties by filing a patent infringement action against Natera, asserting that Natera’s sale of its Panorama™ Prenatal Screen, a non-invasive prenatal test for Down syndrome, infringed U.S. Patent No. 9,493,831. In response to Illumina’s complaint, Natera filed a motion to dismiss under Federal Rule of Civil…Continue Reading ...
Tatana Mala, who briefly served as justice minister in the Czech Republic, resigned over possibleplagiarism issues in two theses (of widely divergent subject matter).One: Microclimatic conditions of rabbit breeding at the Mendel University (allegation…Continue Reading ...
Apple Inc. and Google LLC appeal from the Patent
Trial and Appeal Board’s decision to grant ContentGuard
Holdings, Inc.’s motion to amend in a covered business
method review of U.S. Patent 7,774,280. Because the
Board applied the wrong legal standard to determine
whether the ’280 patent qualified as a covered business
method, we vacate and remand for further proceedings.
As we explained in Unwired Planet, the mere possibility
that a patent can be used in financial transactions is
not enough to make it a CBM patent. 841 F.3d at 1382.
Although the ’280 patent describes embodiments where
the claimed DRM system is used to monetize digital
works, it also explains how the claimed invention can be
used in ways that do not involve financial transactions.
For instance, the specification describes how the claimed
invention can manage healthcare records.
Instead, we hold only that it is not enough for the specification to describe
how the invention could, in some instances, be used to
facilitate financial transactions.
Petitioners and the Patent and Trademark Office, as
intervenors, argue that the Board also determined the
claims are “financial in nature” in its final written decision.
Accordingly, petitioners and the Patent and Trademark
Office maintain that we can sustain the Board’s
determination on that alternative ground. However,
references to the “incidental to” or “complementary to”
standard appear throughout the Board’s final written
decision. See, e.g., J.A. 7–8, 11, 12. On the record before
us, we are unable to discern whether the Board would
have concluded that the ’280 patent qualifies as a CBM
patent had it not applied this standard. On remand, the
Board must determine whether the ’280 patent qualifies
as a CBM patent in the first instance without relying on
the “incidental to” or “complementary to” standard.
Thus, the conclusory “alternative ground” argument was rejectedContinue Reading ...
because the decision seemed to rest on the non-alternative ground.
In Polara Engineering v. Campbell, invalidity theories
of defendant Campbell were rejected, but enhanced damage
analysis by CD Cal was rejected.
Campbell Company (“Campbell”) appeals from the final
judgment of the United States District Court for the
Central District of California entering judgment in favor
of Polara Engineering Inc. (“Polara”) on its claim for
infringement of claims 1–4 (“the asserted claims”) of U.S.
Patent 7,145,476 (“the ’476 patent”) and its decision,
following a jury trial, denying Campbell’s post-trial motions
for judgment as a matter of law of invalidity and no
willfulness, and granting Polara’s motion to enhance the
damages award. See Polara Eng’g, Inc. v. Campbell Co.,
237 F. Supp. 3d 956 (C.D. Cal. 2017) (“Post-trial Motions
Opinion”); Judgment, Polara Eng’g, Inc. v. Campbell Co.,
No. SACV-13-00007 (C.D. Cal. Mar. 31, 2017), ECF No.
499 (J.A. 83–84). For the following reasons, we affirm in
part, vacate in part, and remand.1
An argument of invalidity through public use by Campbell
We agree with Polara that substantial evidence supports
the jury’s finding of experimental use that negates
application of the public use bar.
The jury could have properly based its finding of
experimental use on the need for testing to ensure the
durability and safety of the claimed APS. In City of
Elizabeth v. American Nicholson Pavement Co., the Supreme
Court held that testing an inventive pavement for
“usefulness and durability” for six years on a public
roadway constituted experimental use. 97 U.S. 126, 133–
34 (1877). We have similarly recognized as sufficient to
negate the statutory bar experimental use testing performed
“to perfect features inherent to the claimed invention,”
such as “durability.” Electromotive Div. of Gen.
Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417
F.3d 1203, 1211–12 (Fed. Cir. 2005) (collecting cases);
accord Manville Sales Corp. v. Paramount Sys., Inc., 917
F.2d 544, 551 (Fed. Cir. 1990) (“When durability in an
outdoor environment is inherent to the purpose of an
invention, then further testing to determine the invention’s
ability to serve that purpose will not subject the
invention to a section 102(b) bar.”).
The factual situation here bears a striking similarity
to the situation in City of Elizabeth.
The relative strength of the public use defense was a factor used
by the CAFC to vacate enhanced damages:
The district court referred to Campbell’s invalidity
theories generally in the closeness of the case Read factor.
In determining that this factor was “neutral,” the district
court merely observed that “obviousness was a close call”
and that the “other invalidity theories were weaker.”
Post-trial Motions Opinion, 237 F. Supp. 3d at 993. This
explanation is insufficient for us to determine why the
court viewed this factor as “neutral.” The court’s use of
the relative term “weaker” provides little insight because
it did not explain its reasons for viewing the other defenses,
especially public use, as comparatively “weaker.” We
view the public use defense, which the court did not
explicitly address, as a closer call than obviousness.
Thus, to the extent the district court determined that the
public use defense was weak in this case, the court clearly
Accordingly, we vacate the award of enhanced damages
and remand. See, e.g., Whitserve, LLC v. Comput.
Packages, Inc., 694 F.3d 10, 37 (Fed. Cir. 2012) (remanding
“for a determination of whether enhanced damages
are warranted and an explanation of the grounds for that
determination”); S.C. Johnson & Son, Inc. v. CarterWallace,
Inc., 781 F.2d 198, 202 (Fed. Cir. 1986) (“vacat[ing]
the decision refusing [enhanced] damages under
35 U.S.C. § 284, and remand[ing] for clarification by the
district court”). On remand, we instruct the district court
to provide a more complete explanation, including a
discussion of the public use defense, in exercising its
discretion. We express no view on whether damages
should be enhanced or, if so, by what amount
Note also footnote 1:
Although Polara noticed a cross-appeal from certainContinue Reading ...
determinations of the district court, it has not pursued
those issues in its briefing before this court.
Accordingly, Polara has not properly raised any issue on
cross-appeal, and we need not address the cross-appeal.
Major trading powers led by the United States and European Union took China to task in a World Trade Organization forum today (11 July) over the county’s weak intellectual property rights regime.Continue Reading ...
$$ The various AGC-like functions operating in the base-band audio and FM frequency modulation domain of typical Hi-Fi stereo VCRs, means that an effective copy protection affect can be achieved even when the desired synchronisation rate is not known. / 所望の同期周期が知られていないときでも、通常のハイファイ・ステレオＶＣＲのベースバンド・オーディオおよびＦＭ周波数変調領域で動作する各種のＡＧＣのような機能、即ち、有効なコピー防止効果が得られる。(USP8160423): achieve
$$ WO 88/09950 describes an opthalmic lens which obtains a multifocal effect by employing either a plurality of radially differing zones or a non-homogeneous surface. (USP6390624): obtain
$$ In addition, power may be supplied in both frequency ranges simultaneously to obtain a blended cutting and coagulation effect, the two components being linearly added or otherwise combined in a single signal feed structure.(USPA02022836)
$$ Optimal patterns may be determined experimentally and different effects may be obtained by different patterns. / 最適なパターンは実験によって決定することができ、異なるパターンによって異なる効果が得られることがある。(USP6433483): obtain
$$ A number of different vision effects are obtainable from the above aspects of the invention and different lighting conditions. / 上記の本発明の態様及び異なる照明条件から、多数の異なる視覚効果を得ることができる。(USP6212805): obtain
$$ A similar effect had previously been obtained by injection of a blowing agent with the plastics material as described for instance in GB 2 010 168 A. / 同様の効果は、例えば英国特許Ｎｏ．ＧＢ２０１０１６８Ａに記載されるように、プラスチック材にブロー剤を注入することにより以前から得られている。(USP6287494): obtain
$$ The two way memory effect is only obtained after a specific thermo-mechanical treatment, called training, in which recovery stresses are built into the "cold shape". (USPA02074742): obtain
目次はこちらContinue Reading ...
by Dennis Crouch
Apple and Google v. ContentGuard v. Iancu (Fed. Cir. 2018)
Apple and Google both challenged ContentGuard’s U.S. Patent 7,774,280 under the Covered Business Method Post Grant Review proceedings. The challenges raised eligibility, novelty, and obviousness challenges to several of the claims, but the Director (acting via the PTAB) only partially instituted: instituting only on novelty and obviousness, and only to three of the claims. In the end, the PTAB found those claims obvious, but also allowed the patentee to add Claim 37 as a substitute for Claim 1 and found the new claim valid (not proven invalid).
On appeal, the Federal Circuit ruled the entire event a nullity — finding that the patent does not qualify as a covered business method. See Versata Dev. Grp., Inc.Continue Reading ...
v. SAP Am., Inc., 793 F.3d 1306, 1323 (Fed. Cir. 2015) and Unwired Planet, LLC v.
Google Inc., 841 F.3d 1376, 1379 (Fed. Cir. 2016). A key case on point is also Secure Axcess, LLC v. PNC Bank National Ass’n, 848 F.3d 1370, 1381 (Fed. Cir.
Whether the Citron report is intentionally wrong for the purpose of causing PolarityTE stock to tumble, which it has, or whether it is recklessly wrong, or just ignorant is impossible to tell. But what Citron says can without question be characterized …Continue Reading ...
- Rest in Peace, Justice Ginsburg
- Other Barks & Bites for Friday, September 18: USPTO Announces COVID-19 Provisional Patent Pilot, Copyright Office Issues MMA Ruling and China Issues Draft Patent Linkage Measures
- Recent Commentaries on Major FRAND Cases
- Recent Commentaries on Major FRAND Cases
- Recent Commentaries on Major FRAND Cases