The Patent Trial and Appeal Board (PTAB) recently designated Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016), as precedential.  In this decision the Board clarified how to interpret method and system claims that include conditional language.  Importantly, this decision highlights that these two claim types are not necessarily interpreted the same way.

The Board indicated that if a condition precedent in a method claim is not met, the conditional steps recited in the claim are not required to be performed.  As such, the broadest reasonable interpretation of such a method claim does not include the conditional steps.  Therefore, the conditional steps in a method need not be found in the prior art in order to deny patentability of a method claim.  In contrast, if the same steps are part of a system claim having a programmed processor performing the steps, the system claim is interpreted more narrowly to include all of the steps.  The Board reasoned that since there is a structure (i.e., a processor) tied to the steps in a system claim, the structure is present in the system regardless of whether the condition is met and the conditional function is actually performed.

Continue Reading Analyzing Patent Claims Having Conditional Language – the PTAB Provides Clarity

Disavowal can occur when a patent holder disavows the full scope of claim terms in the specification or during prosecution (e.g., through the doctrine of prosecution history estoppel).  In either event, disavowal requires clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.  However, “clear and unequivocal” does not mean “explicit.”  Last week, in the case of Poly-America, L.P. v. API Industries, Inc., the Federal Circuit explained that “an inventor may disavow claims lacking a particular feature when the specification describes ‘the present invention’ as having that feature.”  Similarly, the court explained that “an inventor may disavow claims lacking a particular feature when the specification distinguishes or disparages prior art based on the absence of that feature.”

Continue Reading Another Friendly Reminder from the CAFC – Use of “the Present Invention” is Clear and Unequivocal Evidence of Disavowal

FTC-DOJFor the first time in 26 years, the FTC and DOJ (the “Agencies”) have issued proposed updates to the Antitrust Guidelines for the Licensing of Intellectual Property, last revised in 1995. The intervening quarter century brought stunning technological advancement, during which time Agencies, courts, and legislators have attempted to apply IP protections in rapidly changing markets without stifling innovation or commerce. The modest proposed revision to the Guidelines evaluates the current landscape and seeks to formalize new standards, settle some disputes, and reflect certain statutory and case law advancements.

Continue Reading FTC and DOJ Issue Proposed Updates to Antitrust Guidelines for Licensing IP

723px-US-CourtOfAppeals-FederalCircuit-Seal_svgPlaintiffs bringing patent infringement complaints under the Iqbal/Twombly pleading standard should take notice.  On September 30, 2016, a panel of the Federal Circuit affirmed a district court’s dismissal of a deficient complaint under Rule 12(b)(6).  The panel agreed held that a complaint for joint infringement of a patent must show which alleged actor performed each of the required claim elements.  The plaintiff’s amended complaint failed to plausibly allege that the defendants exercised the required “direction or control” such that the performance of every claim step could be attributable to them.

Continue Reading Pleading Standard Defined– CAFC Holds that Joint Infringement Complaint Requires Identification of All Required Claim Steps

In a newly issued statement, the U.S. International Trade Commission once again made it clear that standard-essential patents may be asserted at the ITC and will be treated no differently than other patents asserted in a Section 337 investigation. Issues of standard essentiality will be addressed – under commission’s statutory obligation to assess an exclusion order’s impact on the public interest – only after it has been determined that a violation of the statute has occurred. Such issues, therefore, are not appropriate for resolution through the ITC’s Early Disposition Pilot Program.

Read more on the team’s insights into the SEPs at the ITC issue in this Law 360 article (republished with permission).

As a patent owner involved in patent litigation, you must consider numerous factors when negotiating a settlement agreement.  An important contemplation is timing, because finalizing a settlement agreement at the wrong juncture of your legal proceedings can have devastating results.  Specifically, the recent district court ruling in Protegrity USA, Inc., et al. v. Netskope, Inc., Case No. 15-cv-02515-YGR (N.D. Cal. Sept. 13, 2016) suggests that settling during your appeal of an unfavorable district court judgment may leave you stuck with the lower court’s original ruling.

Continue Reading Think Before You Settle: Protegrity Teaches Timing is Important When Negotiating Settlement Agreements

microscopePatent law has many surprises in store for academic scientists pursuing a patent for the first time.  Many patent attorneys were once researchers just like you—we understand it can be intimidating.  This blog series provides tips that, while simplified, will help you to start thinking like an informed inventor.

Part I: You’ve made a discovery – Now what?

We’ll start with the first question a patent attorney might ask you: Have you told anyone about your invention?

A patent can be thought of as a monopoly granted by the government in exchange for the disclosure of an invention.  If an invention is publicly disclosed before a patent application is filed, the premature disclosure might preclude obtaining patent protection for your invention.

Continue Reading Five things academic scientists should know when pursuing their first patent – Five-Part Series

The Federal Circuit recently determined that it lacked jurisdiction to review the Patent Trial and Appeal Board’s determination that assignor estoppel has no affect in an inter partes review (“IPR”).  The majority’s decision in Husky Injection Molding Sys Ltd., v. Athena Automation Ltd., Nos. 2015-1726, 2015-1727 (Fed. Cir. Sep. 23, 2016) effectively allows former patent owners and inventors to use IPRs to challenge patents they have since assigned.

Continue Reading CAFC’s Husky Decision Makes Sledding Tougher for Patent Owners in PTAB Appeals

723px-US-CourtOfAppeals-FederalCircuit-Seal_svgOn remand from the Supreme Court’s decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016), the Federal Circuit recently issued a revised decision in Stryker Corp. v. Zimmer, Inc., No. 2013-1668 (Fed. Cir. 2016).  The decision provides insight into the court’s interpretation of the Halo standard and enhanced damages.

In its en banc decision in In re Seagate Technology, 497 F.3d 1360 (Fed. Cir. 2007), the Federal Circuit held that a district court may increase damages under 35 U.S.C. § 284 only if a patent owner shows by clear and convincing evidence that the infringer acted “despite an objectively high likelihood that its actions constituted infringement,” and then also showed, again by clear and convincing evidence, that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.”

Continue Reading Federal Circuit Revisits Willfulness Post Halo

Fed-Circuit-300x99The Federal Circuit relied on Nautilus to preserve functional language of a method claim in a decision published last Friday.  In Cox Comm, Inc. v. Sprint, No. 2016-1013, the Federal Circuit held that the term “processing system” did not render the asserted claims indefinite.  The Federal Circuit relied on novel considerations to reach this conclusion.  The Federal Circuit stated that because the term “processing system” “play[ed] no discernable role in defining the scope of the claims,” it was difficult to find the claims indefinite.

Continue Reading “Processing System” Does Not Render Claims Indefinite