The Patent Trial and Appeal Board (PTAB) issued an August 2018 update to the American Invents Act Trial Practice Guide (the “Updated TPG”).  The Updated TPG incorporates the PTAB’s current practices and provides further explanation of certain aspects of the PTAB’s standard practices to the public.  Most significantly, the Updated TPG abolishes “observation” practice and replaces it with sur-reply brief practice.

Continue Reading Updates to the PTAB Trial Practice Guide Memorialize Current Practices While Leveling the Playing Field for Patent Owners

In our continued post-TC Heartland coverage, Judge Gilstrap in the Eastern District of Texas recently held that venue was proper because Google exercises exclusive control over physical servers implicated by the litigation, as well as the physical space within which the server is located and maintained. The court emphasized that the place where the server is located occupies a physical space, which is more than merely a virtual space or electronic communications from one person to another. In additional to occupying physical space, Google exercises exclusive control over the digital aspects of the third-party that hosts the server.

Google retains more control over the server than under a general lease arrangement. For example, Google requires its third party ISPs to provide “rack space, power, network interfaces, and IP addresses . . . in consultation with Google . . . remote assistance and installation services . . . network access between the Equipment and Host network subscribers . . .” The ISP agreement makes it clear that the ISP does not own the server(s)–Google does. Google’s ownership of the server and its contents is absolute, as is Google’s control over the server’s location upon installation. Accordingly, the server itself and the place where it is physically housed, both independently and together, met the statutory requirement of a “physical place” sufficient to confer proper venue.

See Judge Gilstrap’s order here.

Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims.  Examples include claim amendments and statements made by the applicant during prosecution in papers filed with the U.S. Patent and Trademark Office (USPTO).  Less common are scenarios in which prosecution history estoppel may limit a U.S. design patent’s claims.  The Federal Circuit’s recent decision in Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co. provides one scenario where prosecution history estoppel for a design patent was a key issue in claim interpretation.

Continue Reading Lessons about Prosecution History Estoppel and Design Patents from <i>Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co.</i>

Is there any possible danger in using the abbreviation “i.e.” in the specification of a U.S. patent application?  The Federal Circuit’s recent decision in TF3 Limited v. TRE Milano, LLC shows that the answer is “yes.”  The court provided a reminder that use of “i.e.” in the specification signals an intent to define the term to which it refers.  Thus, the court held that the term cannot be interpreted to be broader than the definition provided in the specification by the use of “i.e.” when interpreting the term under the broadest reasonable interpretation standard before the U.S. Patent and Trademark Office.

Continue Reading Patent Specification Drafting Considerations Highlighted by <i>TF3 Limited v. TRE Milano, LLC</i>

In our continuing post-TC Heartland coverage, the District of Nevada recently identified a key factor in analyzing venue challenges in patent litigation: whether the public can access the defendant corporation or its services in the respective forum. In this case, the defendant did not have any officers, directors, or employees based in Nevada – nor did it have any office, land, facilities, or sales in Nevada.

The court granted the defendant’s motion to transfer for improper venue and rejected plaintiff’s argument that In re Cray’s three-part definition of “regular and established place of business” should not apply to web-based businesses. The Court concluded that in defining a regular and established business the “key inquiry is not whether physical objects are involved, but rather whether the public has access to the defendant corporation through an employee or office located in the district where a suit is brought or if the public directly accesses the services of defendant through a location in the respective forum.” Continue Reading Improper Venue for Web-Based Company in light of <i>In re Cray</i>

Some inventions require testing before they are ready for patenting, and sometimes that testing requires use by the public. A recent decision from the Federal Circuit provides additional guidance on what activities qualify for the experimental use exception to the public use bar of 35 U.S.C. § 102(b).

In Polara Engineering Inc. v. Campbell Co., the patent at issue relates to an accessible pedestrian signal system (“APS”). More than one year prior to filing a patent application, Polara installed prototypes of the APS at public intersections. The Federal Circuit agreed with the lower court that these installations fall within the experimental use exception to the public use bar.

Continue Reading When Public Use Qualifies for the Experimental Use Exception to 35 U.S.C. § 102(b)

A recent decision by the International Trade Commission (“ITC” or the “Commission”) improves intellectual property holders’ ability to prove that they have a “domestic industry” and obtain relief for infringement from the Commission.  Specifically, the ITC ruled that investments  in “non-manufacturing activities,” including engineering and research and development activities related to a domestic industry protected article under section 337(a)(3)(C), can support a finding of domestic industry under sections 337(a)(3)(A) or (B)—the sections traditionally associated with manufacturing.  The Commission also ruled that manufacturers could use certain investments in components and contract employees to support a finding of domestic industry.  The Commission’s opinion removes uncertainty for companies relying upon research and development activities and expenditures to establish a domestic industry. It also helps parties relying on manufacturing expenses to establish a domestic industry.

Continue Reading Recent ITC decision clarifies and eases domestic industry burden for patent holders

This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications.  Part 1 is a general overview of how to make a proper priority claim, without addressing how to correct an improper priority claim, which will be examined in Part 2.

In general, for examination purposes at the U.S. Patent and Trademark Office (USPTO), a priority claim determines the priority date of a patent application.  But why is that important?  Because the priority date effectively determines what references can and cannot be asserted as prior art against a patent application during its examination.  That is, the priority date draws a line in the sand for prior art, and this line cannot be crossed.

Continue Reading Understanding Priority Claims for U.S. Patent Applications: Part 1

Patent owners have a new arrow in their quiver. The Supreme Court has held that patent owners can recover foreign lost profits for the use or sale of infringing products abroad if the products were assembled from components of the patented invention exported from the United States.

In WesternGeco v. Ion Geophysical, issued today, the Court explained that the purpose of the damages provision in the Patent Act is to put patent owners in as good a position as they would have been in if the infringement had never occurred. Infringement under the section 271(f)(2) of Patent Act includes exporting components of a patented invention for assembly and use abroad in a manner that would infringe the patent if such assembly and use had occurred in the United States. Making patent owners who have suffered such infringement whole means allowing them to recover foreign lost profits, the Court said.

Continue Reading The Patent Act Allows for Full Compensation for All Forms of Infringement

In the time since the Federal Circuit issued its Vanda Pharma decision in April, Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. 887 F.3d 1117 (Fed. Cir. 2018) the US Patent and Trademark Office (USPTO) has issued two memos to the examining corps which provide increased clarity and predictability in the determination of patent eligibility which is more good news for the eligibility of claims relating to diagnostic or similar tests utilized in treating patients. If you’re not familiar with the Vanda Pharma decision, and want more detail, see my previous post HERE.

Continue Reading With its Vanda Pharma and Berkheimer memos USPTO provides increased clarity, predictability for patent eligibility in a further boost for inventions in personalized medicine