Happy Birthday, George Washington

In the good old days, George Washington’s birthday was holiday, making February a great month for school kids, because Abraham Lincoln’s birthday was also a holiday. Two days off in the bleakest month, coupled with cupcakes on Valentine’s Day, and it was a great month to be in grade school. In addition to being celebrated by generations of school children, Inventors have celebrated George Washington many times, including in these ten patents:

U.S. Patent No. D8377 protects a Medal honoring George Washington:

U.S. Patent No. D9138 also features George Washington:

U.S. Patent No. D9161 on a badge featuring George Washington:

U.S. Patent No. D9247 is on a hatchet centennial charm that features George Washington:

U.S. Patent No. D9310 on a fan design features both George and Marth Washington and their Mount Vernon estate:

U.S. Patent No. D9310 protects a statue of George Washington:

U.S. Patent No. D17839 protects a badge featuring Geroge Washington:

U.S. Patent No. D21,357 protects a spoon decorated with an image of George Washington.

U.S. Patent No. D21688 protects a badge featuring George Washington:

U.S. Patent No. D21835 on a spoon featuring George Washington:

Happy 292nd Birthday, George, and thanks for the days off!

Presidents Day 2024

Presidents have had a lot to do with patents over the years. Presidents used to sign the patents, and George Washington signed the first patent issued by the U.S. Government on July 31, 1790:

Of course every patent nerd knows that Abraham Lincoln on May 22, 1849, Abraham Lincoln received Patent No. 6469 for a device to lift boats over shoals. He is the only president to have received a patent.

However, a number of presidents have been the subject of patents:

U.S Patent No. D41046, issued July 17, 1917, honors presidents Washington, Lincoln, and Wilson:

President Washington got another shout out a few years early, in U.S. Patent No. 537,666, which issued on April 16, 1895, on a toy bank featuring the future President and a cherry tree:

The presidents from Washington to Grant were featured in U.S. Patent No. D9138, which issued March 14, 1875, on a fan:

The presidents from Washington to Grant also shared the spotlight in U.S. Patent No. D8000 issued January 12, 1875:

On August 3, 1915, U.S. Patent No. 1148885 made the Presidents part of a patented puzzle:

The first 31 presidents made were celebrated in U.S. Patent No. 2,284,256 on a Card Game, issued May 26, 1942:

There are of course many other patents that mention one or more presidents, but those are for a future Presidents Day post.

VALEN-TECH II (More IP to Ensure your Happy Valentine’s Day)

U.S. Patent No. 1,353,709 discloses a token “which may be presented as an expression of friendship or admiration.”

•U.S. Patent No. 2,726,397discloses an apron with interchangeable appliques, explaining “often such persons as housewives and hostesses desire to decorate articles of clothing, curtains, coverings and so forth with figures and designs of various shape and color.” Reportedly this was even more popular than the Valentine-themed vacuum cleaner.

U.S. Patent No. 3,016,178 discloses a box construction, such as Valentines Day boxes, which are intended to contain candy or other comestibles or flowers. This is one of many patents on heart-shaped boxes.

U.S. Patent No. 6,172,328 discloses methods for etching, cutting and/or altering, the surface of a flower, plant, cut foliage, allowing one to inscribe a Valentine’s Day greeting on the flowers themselves.

U.S. Patent No. 6,053,399 “relates to mailers and envelopes and, more particularly, to envelops and mailers for sending small sachets and photographs.”

U.S. Patent No. 5,160,087 discloses a drinking straw, designed to demonstrate the need for teamwork.

U.S. Patent No. 4993184 discloses a “heart-shaped, free standing, living plant comprises at least two living plants, a left plant and a right plant, formed into opposed lobes forming the heart configuration.”

Last, but not least, U.S. Patent No. 5727565, discloses a heart shaped “kissing shield comprised of a thin, flexible membrane and a frame or holder” to ensure that your Valentine’s Day is both safe and happy!

Inventorship Guidance for AI-Assisted Inventions

On February 13, 2024, the USPTO published guidance for AI-assisted inventions in the Federal Register, outlining two basic points: First, inventors and joint inventors named on U.S. patents and patent applications must be natural person, and Second, AI-assisted inventions are not categorically unpatentable for improper inventorship. The guidance also reiterated the Pannu factors for identifying inventors of AI-assisted inventions. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)

The USPTO previously determined that inventorship is limited to natural persons, and this was affirmed in Thaler by the Eastern District of Virginia (Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021)) and the Court of Appeals for the Federal Circuit (Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023)). Thus, AI cannot be named as an inventor or co-inventor. The Guidance recognizes that while an AI system may not be named an inventor or joint inventor in a patent or patent application, an AI system— like other tools—may perform acts that, if performed by a human, could constitute inventorship under our laws, but the patent statute limits inventorship to natural persons.

While AI systems and other nonnatural persons cannot be listed as inventors on patent applications or patents, the use of an AI system by a natural person does not preclude a
that natural person from qualifying as an inventor (or joint inventors) if that natural person significantly contributed to the claimed invention. The Federal Circuit has made clear that conception is the touchstone of inventorship. Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir.
1994). Conception is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

There is no requirement for a named inventor to contribute to every claim in an application or patent; a contribution to a single claim is sufficient. However, each claim must have been
invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent application or patent. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application.

The Guidelines identify these factors for when a natural person is an inventor of an AI-assisted invention:

  1. Use of an AI system in creating an AI-assisted invention does not negate the person’s use of contributions as an inventor.
  2. A significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.
  3. A person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor.
  4. A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention.
  5. A natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, if that is a significant contribution to the invention created with the AI system.

The Guidelines identify these factors for when a natural person is not inventor of an AI-assisted invention:

  1. Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception.
  2. A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system.
  3. A natural person who merely recognizes and appreciates the output of an AI system as an invention, is not necessarily an inventor.
  4. A person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.

Mardi Gras 2024

More examples of how the patent system improves everything — including Mardi Gras. U.S. Patent No. D645226 protects an Edible Cookie Mask, and get that last snack in before Lent begins:

U.S. Patent No. D629177 also provides a Mardi Gras mask, but without the snack:

U.S. Patent No. PP21407 provides an Aeonium Plant named “Mardi Gras” (and a cool word with all of the vowels):

U.S. Patent No. D611117 provides a Mardi Gras Doubloon Fishing Lure, to get a jump on meatless Fridays:

U.S. Patent No. PP15203 provides an Abelia Plant named “Mardi Gras”:

U.S. Patent No. D375658 provides a serving basket in the form of a Mardi Gras parade float:

U.S. Patent No. 8672169 provides a decorated cup for your Mardi Gras libations:

You Better Watch Out

There are approximately 638 issued patents that mention Santa Clas, more that a hundred or so that actually show him. His first appearance was in U.S. Patent No. 276,586 in 1883:

Since then, his appearance has changed over the years, as the following collection shows:

Santa Claus, whatever he looks like, is about to come to town a gain. Happy holidays!

Definition in Patent Incorporated by Reference, Results in Obviousness Determination

In Parkervision, Inc., v. Vidal, [2022-1548] (December 15, 2023) the Federal Circuit affirmed the PTAB’s determination that claim 3 of U.S. Patent No. 7,110,444 was unpatentable as obvious.

At issue on appeal was the construction of “storage element.” The Federal Circuit noted that in the ‘551 patent, incorporated by reference into the ‘444 patent, Parkervision acted as its own lexicographer to define the term “storage element.” The language expresses an intent to define the term “storage element.”  In particular the Federal Circuit said that the patentee’s use of the phrases “as used herein” and “refer to” conveys an intent for sentence 5 to be definitional.”  The language was found definitional because it did not refer to reference numerals, and referring to the document as a whole with the phrase “as used herein.”

The Federal Circuit found that the Board’s construction of “storage element”—“an element of a system that stores non-negligible amounts of energy from an input EM signal”— correctly tracks the lexicography provided in the specification.  Agreeing with the PTAB’s claim construction, the Federal Circuit affirmed their obviousness determination as well.

Filing an ANDA is not Infringement, Unless the Specified Use is Claimed in the Patent

In H. Lundbeck A/S v. Lupin Ltd., [2022-1194, 2022-1208, 2022-1246] (December 7, 2023), the Federal Circuit affirmed the judgment of non-infringement of U.S. Patent Nos.

9,278,096 and 9,125,910, and the determination that Lupin infringed claim 12 of U.S. Patent No. 9,101,626.

The Federal Circuit agreed with the district court that filing an ANDA is not infringement, unless the specified use is claimed in the patent.  The defendants solely seek approval to market the drug for the treatment of MDD pursuant to the methods of expiring patents—that is the “purpose” of the ANDA submissions. Thus, the patented uses are not those for which ANDA approval is sought. The Federal Circuit found that Plaintiffs have failed to establish that section 271(e)(2)(A) provides an independent basis of infringement.

The Federal Circuit also rejected the argument that the ANDA induced infringement, noting that the label in question is not a label that induces infringement of the ’096 patent. It was the label FDA required for the sale of the drug to treat MDD—a label that the patentee itself proposed for that purpose in connection with its NDA for treating MDD and that preexisted the issuance of the ’096 patent.  It cannot be, as plaintiffs suggest, that a patentee can bar the sale of a drug for a use covered only by patents that will have expired simply by securing a new patent for an additional, narrower use.

On its cross appeal, argued that the district court erred in construing “reacting” in the ’626 patent to mean “the changing of a reactant(s) to product(s)” and in finding infringement under that construction. The Federal Circuit disagreed.  Lupin contended that “reacting” meant “the specified chemicals are added to the reaction vessel at the beginning of the process as starting material,” and Lupin’s process does not use one of the compounds as a starting material.  The Federal Circuit said that it was true that the specification only refers to using the compound as starting materials, but nothing in the claims, specification, or file history requires Lupin’s narrower reading.

The Federal Circuit noted that the district court’s definition was consistent with the dictionary definition, that the prosecution did not support Lupin’s definition, nor did Lupin’s arguments about claim differentiation.  Based upon what the Federal Circuit found was the correct definition of reacting, the Federal Circuit affirmed the finding of infringement.

The One Year Deadline for a PTAB Final Written Decision is more of a Guideline than a Rule (Oh, and the Written Description is more of a Rule than a Guideline)

In Purdue Pharma L.P., v. Collegium Pharmaceutical, Inc., [2022-1482] (November 21, 2023), the Federal Circuit affirmed the Final Written Decision of the PTAB that claims 1–17 of U.S. Patent No. 9,693,961 were unpatentable for lack of written description and anticipation.  The patent is titled “Pharmaceutical Formulation Containing Gelling Agent” and is meant to prevent or deter the abuse of opioid analgesics by the inclusion of at least one aversive agent.

Deadline for Final Written Decision

At the outset, the Federal Circuit rejected Purdue’s argument that the Board lacked authority to issue a Final Written Decision once the deadline established by 35 U.S.C. § 326(a)(11) and 37 C.F.R. § 42.200(c) (one year plus the six-month extension) passed.

Written Description

On written description, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.  The Federal Circuit said it has required that the specification provide sufficient blaze marks to “guide a reader through the forest of disclosed possibilities toward the claimed compound.”  The issue was whether the ’961 specification adequately disclosed the claimed polyglycolyzed glycerides (“PGGs”) as an aversive agent. The Board found the claimed formulation was not disclosed, and the Federal Circuit concluded that substantial evidence supported the Board’s finding.

Although the ’961 claims on their face do not require an aversive agent, the specification makes clear that the claims require “inclusion of at least one aversive agent” and the parties agree that the claims require the use of an aversive agent.  PGGs are identified as a possible surfactant “useful in accordance with the present invention.”  While the specification discloses that some surfactants can be gelling agents and that gelling agents can satisfy the aversive agent requirement, the parties agree that not all surfactants are gelling agents.  The specification does not say that PGGs are gelling agents.  The only time PGGs are mentioned in the specification, they are described as a surfactant, and not as a gelling agent, and surfactants generally are described as “useful in accordance with the present invention.”  In other parts of the specification, the patent recognizes that surfactants can be used completely separate from and in addition to the gelling agent.

The Federal Circuit said that “[j]ust because the specification states PGGs are useful for the invention does not suggest how PGGs are gelling agents. The disclosure of the application does not reasonably convey to those skilled in the art that the inventor had possession of the claimed drug formula containing PGGs as a gelling agent (aversive agent). In other words, there are insufficient blaze marks.” Because the anticipation finding flowed from the lack of written description in the claimed priority application, the finding of anticipation was affirmed.

Blast from the Past: In Vivo Testing is Not Required for an Actual Reduction to Practice

In Medtronic, Inc., Medtronic Vascular, Inc., v. Teleflex Life Sciences Limited, [2022-1721, 2022-1722] (November 16, 2023) the Federal Circuit affirmed two Final Written Decisions of the PTAB that the challenged claims of U.S. Patent RE46,116 had not been shown to be unpatenable.  The patent was directed to a method for using a guide extension catheter with a guide catheter.

Medtronic alleged invalidity of the claims based upon the Itou reference.  Teleflex argued that Itou was not prior art because the claimed invention was (1) conceived prior to Itou’s filing date of September 23, 2005 (i.e., the critical date), and (2) was either (a) actually reduced to practice before the critical date or (b) diligently pursued until its constructive reduction to practice through its effective filing in May 2006.  The Federal Circuit found that the invention was constructively reduced to practice.

Unique to this case was the question whether or not in vivo testing was required for actual reduction to practice because the claims at issue are method claims reciting “advancing . . . a guide catheter . . . through a main blood vessel to an ostium of a coronary artery.” The Board found that such testing was not required, noting Medtronic “was unable to identify any legal precedent requiring in vivo performance of a claimed in vivo method to show actual reduction to practice.” The Board found that the viability of the claimed method could be verified using a physical model that replicates the anatomy in which the method would likewise be performed in vivo.”

The Board also found that the Teleflex patent was entitled to an early priority date that removed Root as a prior art reference.  This issue was eliminated by prior decisions involving related patents.