• Using Anonymous Third-Party Submissions to Advance Your Business Goals

    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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  • Illumina, Inc. v. Natera, Inc. (N.D. Cal. 2018)

    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…

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  • CAFC finds Board applied wrong legal standard in Apple v. ContentGuard

    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 rejected
    because the decision seemed to rest on the non-alternative ground.

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  • The CAFC second guesses CD Cal on relative strength of invalidity theories; remand asks for a more complete explanation

    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
    was rejected:

    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 certain
    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.

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  • 効果が得られる



    $$ 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


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  • Covered Business Method: Licensing of Content is not (necessarily) a Financial Service

    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.
    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.

    Continue reading Covered Business Method: Licensing of Content is not (necessarily) a Financial Service at Patently-O.

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