• Optimizing QoS is Purely Subjective and therefore Indefinite

    By Dennis Crouch

    Intellectual Ventures I LLC v. T-Mobile USA, Inc. (Fed. Cir. 2018)

    Delaware Chief Judge Stark ruled on summary judgment that T-Mobile did not infringe IV’s  U.S. Patent No. 6,640,248. The district court also found claim 20’s means-plus-function limitation left that claim indefinite.  On appeal, the Federal Circuit reversed claim construction and thus vacated on non-infringement — however, the court affirmed on indefiniteness.

    Indefiniteness: The indefiniteness doctrine is codified within 35 U.S.C. 112(b), which requires each claim be “particular” and “distinct.”  The Supreme Court’s most recent statement on the doctrine requires that claims delineate their scope with “reasonable certainty.”  Although I have not checked into the stats recently, my somewhat educated prior is that the district courts have followed the Federal Circuit’s lead in usually giving issued patents a ‘pass’ on definiteness — much like utility.  The one major exception is the area of of means-plus-function claims.

    35 U.S.C. 112(f) allows for claims to include particular elements “expressed as a means … for performing a specified function without the recital of structure, material, or acts in support thereof.”  However, when MPF style is used the Federal Circuit requires that at least one example of a the corresponding omitted structure be described within the patent specification. 

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  • Damian Porcari – Detroit Patent Office

    Damian Porcari – Detroit Patent Office

    I am happy to announce that Damian Porcari has been sworn-in as the new USPTO Midwest Regional Office director in Detroit. Porcari has been a longtime fixture in the Michigan intellectual property circles — and “retired” from his position as Director of Licensing and Enforcement for Ford in 2017 after 28 years with the company.  Congratulations!

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  • Preventing a Graffiti Copyright Infringement Lawsuit

    Filming and photographing in public venues – parks, streets, subway stations – for ads, TV spots and social media videos can produce exciting, creative results for advertising campaigns, but companies advertising should be careful when using shots featuring graffiti in the background. It may be protected by copyright law. Even if the graffiti has not been lawfully created, but rather produced in an act of vandalism or trespass, the artist could raise a copyright infringement claim that could…

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  • Preventing a Graffiti Copyright Infringement Lawsuit

    Filming and photographing in public venues – parks, streets, subway stations – for ads, TV spots and social media videos can produce exciting, creative results for advertising campaigns, but companies advertising should be careful when using shots featuring graffiti in the background. It may be protected by copyright law. Even if the graffiti has not been lawfully created, but rather produced in an act of vandalism or trespass, the artist could raise a copyright infringement claim that could…

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    $$ As the wire-free area may be up to 300 mm in width, this hot spot region may also be at least 300 mm in width. / ワイヤーの無い領域は、…

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  • Inside Views: New Health Ministry Of Chile Reaffirms Path To Compulsory Licence For Hepatitis C Drugs

    Last week, Chilean Health Minister Emilio Santelices, appointed by President Piñera – who took office this year – rejected an attempt from company Gilead and a Big Pharma-related association of international drug makers in Chile to put down the resolution 399/2018 declaring public health justifications for the issuing of compulsory licences for sofosbuvir to treat a hepatitis C epidemic in Chile, that was issued by the previous government of Michele Bachelet, writes Luis Villarroel.

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  • Intellectual Ventures wins claim construction appeal at CAFC

    Intellectual Ventures won its appeal on claim construction at the CAFC:


    Intellectual Ventures I LLC (“IV”) appeals from a
    grant of summary judgment by the U.S. District Court for
    the District of Delaware that T-Mobile USA, Inc., TMobile
    US, Inc., Ericsson Inc., Telefonaktiebolaget LM
    Ericsson, and United States Cellular Corporation (collectively,
    “T-Mobile”) have not infringed U.S. Patent
    No. 6,640,248. Because we hold that the district court’s
    grant of summary judgment resulted from an erroneous
    claim construction, we vacate and remand.
    We affirm the
    district court’s determination regarding indefiniteness.

    Teva is cited:


    Because it is based solely upon the intrinsic record,
    we review the district court’s claim constructions de novo.
    Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
    841–42 (2015). We review a determination of indefiniteness
    de novo, though we review any factual findings about
    extrinsic evidence for clear error. BASF Corp. v. Johnson
    Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). We
    review the district court’s grant of summary judgment
    under the law of the regional circuit, here the Third
    Circuit, which performs de novo review. Akzo Nobel
    Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1338
    (Fed. Cir. 2016).

    Of IV’s argument:


    IV argues the district court erred in construing “application-aware
    resource allocator” in claim 1 and “application-aware
    media access control (MAC) layer” in claim 20
    as a resource allocator that “has knowledge of the type of
    data application and further takes into account, when
    allocating bandwidth, information about applications at
    [OSI] application layer 7.” According to IV, application
    awareness requires only that the resource allocator allocate
    resources based on application type, which can be
    discerned using information obtained from any of network
    layer 3, transport layer 4, or application layer 7.
    We agree. “The words of a claim are generally given
    their ordinary and customary meaning as understood by a
    person of ordinary skill in the art when read in the context
    of the specification and prosecution history.” Thorner
    v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
    (Fed. Cir. 2012). The plain language of the claims, the
    specification, and the prosecution history all support IV’s
    construction.

    T-Mobile argued “clear disavowal” of claim scope:

    Since “[i]t is the claims that define the metes and bounds
    of the patentee’s invention,” “[t]he patentee is free to
    choose a broad term and expect to obtain the full scope of
    its plain and ordinary meaning unless the patentee explicitly
    . . . disavows its full scope.” Thorner, 669 F.3d at
    1367 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313
    (Fed. Cir. 2005) (en banc)). Disavowal is an “exacting”
    standard under which it must be established that the
    patentee “demonstrate[d] an intent to deviate from the
    ordinary and accustomed meaning of a claim term”
    through “expressions of manifest exclusion or restriction,
    representing a clear disavowal of claim scope.” Epistar
    Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1334 (Fed.
    Cir. 2009).

    The statements in the prosecution history T-Mobile
    cites do not meet this exacting standard.

    (…)

    The patentee’s reference to Figure 15A, depicting embodiments
    in which the resource allocator becomes application
    aware using information obtained from network layer 3
    and transport layer 4 packet headers, is inconsistent with
    T-Mobile’s urged disavowal of these embodiments.

    Even more telling is the patentee’s addition, in the
    2002 Reply, of claim 19, which expressly provides that the
    “application type” can be recognized through “analysis of
    at least one of: . . . information operated on at layer 3 of
    the OSI model, information operated on at layer 4 of the
    OSI model, . . . and information operated on at layer 7 of
    the OSI model.” This shows that the patentee knew how
    to restrict the resource allocator to using information
    obtained from layer 7. If the patentee had intended to
    similarly restrict the resource allocator in claim 1, it could
    have done so using the language of claim 19, but did not.
    See Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353,
    1359 (Fed. Cir. 2016). What’s more, the addition of a
    dependent claim reciting that the resource allocator can
    use information obtained not only from application layer 7
    but also from network layer 3 and transport layer 4 belies
    any disavowal of these latter embodiments in the independent
    claim from which it depends.

    (…)

    Having discerned no disavowal, we hold that the “application-aware
    resource allocator” in claim 1 and “application-aware
    media access control (MAC) layer” in
    claim 20 are not restricted to allocating resources using
    information obtained from application layer 7. We construe
    this claim language to have its plain meaning,
    which permits the resource allocator to allocate resources
    based on application type, which can be discerned using
    information from any of network layer 3, transport layer
    4, and application layer 7.

    As to indefiniteness:


    Under 35 U.S.C. § 112, a patent claim must “particularly
    point[] out and distinctly claim[] the subject matter”
    regarded as the invention. In particular, a claim, viewed
    in light of the specification and prosecution history, must
    “inform those skilled in the art about the scope of the
    invention with reasonable certainty.” Nautilus, Inc. v.
    Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014); see
    also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
    1371 (Fed. Cir. 2014) (“The claims, when read in light of
    the specification and the prosecution history, must provide
    objective boundaries for those of skill in the art.”).
    While a claim employing a “term[] of degree” may be
    definite “where it provide[s] enough certainty to one of
    skill in the art when read in the context of the invention,”
    Interval Licensing, 766 F.3d at 1370, a term of degree that
    is “purely subjective” and depends “on the unpredictable
    vagaries of any one person’s opinion” is indefinite
    , Datamize,
    LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350–
    51 (Fed. Cir. 2005).

    We conclude that the “QoS requirements” are entirely
    subjective and user-defined. The ’248 patent analogizes
    QoS to “a continuum, defined by what network performance
    characteristic is most important to a particular
    user” and characterizes it as “a relative term, finding
    different meanings for different users.” ’248 patent at
    12:51–52, 62–65. “Ultimately,” the ’248 patent states,
    “the end-user experience is the final arbiter of QoS.” Id.
    at 14:39–40.

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