On February 9, 1909, Pasquale Nigro was issued U.S. Patent No. 912,152 on a fire escape.
While it would no doubt save you from fire, its ability to protect you from gravity is much less certain.
February 8 Patent of the Day
On February 8, 1881, Louis C. Tiffany was issued U.S. Patent No. 237,416 on a Glass Tile, Mosaic, Etc.:
February 7 Patent of the Day
On February 7, 1984, Timothy G. Zell was issued U.S. Patent No. 4,429, 685 on a Surgical Procedure.
The surgical procedure was a “method of forming a unicorned animal having what is thought to be a higher mental capacity and greater physical capabilities.”
February 6 Patent of the Day
On February 6, 1934, William D. Coolidge was issued U.S. Patent No. 1,946,312 on an X-Ray Tube, for creating x-rays for medical imaging at lower voltages:
Patent Challenger Loses with Unreasonably Broad Claim Construction
In Trivascular, Inc., v. Samuels, [2015-1631) (February 5, 2015), the Federal Circuit affirmed a rare PTAB determination in an IPR that the claims of U.S. Patent No. 6,007,575 were not shown to be invalid. The claims were directed to stents with an inflatable cuff for securing the stent in a blood vessel.
TriVascular argued that the Board erred in construing “circumferential ridges” to mean a “raised strip disposed circumferentially about the outer surface of the inflatable cuff,” contending that it should have been construed to mean “an elevated part of the outer surface disposed about the inflatable cuff that can be either continuous or discontinuous.” The Federal Circuit found that TriVascular’s proposed interpretation was unreasonably broad, and that find the Board’s reliance on the dictionary definition of ridge when considered in the context of the written description and plain language of the claims was proper.
TriVascular further argued that the Board should have applied prosecution history disclaimer, and found that Samuels had disclaimed the narrower construction that the ridges must be continuous. The Federal Circuit said that the same general tenets that apply to prosecution history estoppel apply to prosecution history disclaimer. Both doctrines require that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process. As applied to a disclaimer analysis, “the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention.” Disclaimer “ensures that claims are interpreted by reference to those that have been cancelled or rejected, but the party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a “clear and unmistakable” disclaimer that would have been evident to one skilled in the art.
TriVascular argued that the disclaimer arose when Samuels amended the claims to recite “continuously circumferential ridges,” but the claims that were later allowed did not have this requirement, but instead had other limitations defining over the prior art. However the Federal Circuit did not find this sufficient to work a clear and unmistakable disclaimer.
Regarding obviousness, the Federal Circuit noted that Although the KSR test is flexible, the Board must still be careful not to allow hindsight reconstruction of references without any explanation as to how or why the references would be combined to produce the claimed invention. The Federal Circuit found that the Board’s findings that a skilled artisan would neither have had the motivation to combine nor a reasonable likelihood of success in combining the references were supported by substantial evidence, and supported the Board’s conclusion on nonobviousness.
Finally the Federal Circuit rejected Trivascular’s complaint that the final written decision was inconsistent with the Board’s institution decision. The Federal Circuit commented that this misguided theme pervaded TriVascular’s briefs, and said that contrary to TriVascular’s assertions:
the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong. To conclude otherwise would collapse these two very different analyses into one, which we decline to do.
The Federal Circuit added that TriVascular’s argument also fails to appreciate that there is a significant difference between a petitioner’s burden to establish a “reasonable likelihood of success” at institution, and actually proving invalidity by a preponderance of the evidence at trial.
February 5 Patent of the Day
On February 5, 1974, Raymond Damadian was issued U.S. Patent No. 3,789,832 on Apparatus and Method for Detecting Cancer in Tissue — MRI imaging for the detection of cancer.
Regarding Beauregarding
A Beauregard claim is a claim to a computer program written as a claim to an article of manufacture: a computer-readable medium on which instructions are encoded for carrying out a process. Beauregard appealed the rejection of his claims directed to software on a tangible storage medium. The Court never approved this method of claiming software, because the Commissioner of Patents conceded that “that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. § 102 and 103,” and dismissed the appeal In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).
This worked well until In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), where the Federal Circuit held that signals were not patent eligible, because their ephemeral nature kept them from falling within the statutory categories of 35 U.S.C. § 101. This undermined Beauregard claims to computer programs electronically distributed. In 2010, the USPTO advised applicants that, to avoid running afoul of In re Nuijten, software claims should be directed to non-transitory computer-readable media.
However, the USPTO’s wording may be problematic, because rewritable storage media such as flash drives, are regarded by at least some as “transitory.” To resolve this potential issue with the USPTO’s non-transitory computer-readable media, it may behoove the applicant to provide an explanation or definition of “non-transitory” that does not exclude legitimate tangible temporary storage media. For example, this language from recently issued U.S. Patent No. 9113131:
Generally speaking, a computer-accessible medium may include any tangible or non-transitory storage media or memory media such as electronic, magnetic, or optical media—e.g., disk or CD/DVD-ROM coupled to computer system 400 via bus 430. The terms “tangible” and “non-transitory,” as used herein, are intended to describe a computer-readable storage medium (or “memory”) excluding propagating electromagnetic signals, but are not intended to otherwise limit the type of physical computer-readable storage device that is encompassed by the phrase computer-readable medium or memory. For instance, the terms “non-transitory computer-readable medium” or “tangible memory” are intended to encompass types of storage devices that do not necessarily store information permanently, including for example, random access memory (RAM). Program instructions and data stored on a tangible computer-accessible storage medium in non-transitory form may further be transmitted by transmission media or signals such as electrical, electromagnetic, or digital signals, which may be conveyed via a communication medium such as a network and/or a wireless link.
U.S. Patent No. 9110963 explains:
The terms “tangible” and “non-transitory,” as used herein, are intended to describe a computer-readable storage medium (or “memory”) excluding propagating electromagnetic signals, but are not intended to otherwise limit the type of physical computer-readable storage device that is encompassed by the phrase computer-readable medium or memory. For instance, the terms “non-transitory computer readable medium” or “tangible memory” are intended to encompass types of storage devices that do not necessarily store information permanently, including for example, random access memory (RAM). Program instructions and data stored on a tangible computer-accessible storage medium in non-transitory form may further be transmitted by transmission media or signals such as electrical, electromagnetic, or digital signals, which may be conveyed via a communication medium such as a network and/or a wireless link.
A simpler explanation is provided in U.S. Patent No. 9148676:
The term “non-transitory”, as used herein, is a limitation of the medium itself (i.e., tangible, not a signal ) as opposed to a limitation on data storage persistency (e.g., RAM vs. ROM).
When claiming software stored on a computer readable medium, explaining the claim terms may be important.
February 4 Patent of the Day
On February 4, 1941, Roy J. Plunkett, was issued U.S. Patent No. 2,230,654 on Tetrafluoroethylene Polymers (the material branded as TEFLON
.
February 3 Patent of the Day
On February 3, 1948, E.W. Ingram, Sr. was issued U.S. Patent No. 2,435,355 on a Package Construction (the White Castle hamburger package):
Provisional Applications Narrow Construction of Four Patents, Broaden Construction of Two
In the Trustee of Columbia University in the City of New York v, Symantec Corporation, [2015-1146] (February 2, 2016) the Federal Circuit affirmed the district court’s claim construction order and subsequent partial final judgment of non-infringement and invalidity with respect to U.S. Patent Nos. 7,487,544, 7,979,907, 7,448,084, 7,913,306, but reversed the claim construction of U.S. Patent Nos. 8,074,115, and 8,601,322, and remanded for further proceedings.
At issue was the meaning of “byte sequence feature,” which the district court found was limited machine code instructions, but the patent owner argued included other information. The Federal Circuit first rejected the patent owner’s argument that the presumption of plain and ordinary meaning can be overcome when the patentee has expressly defined a term or disavowed the full scope of the claim in the specification and the prosecution history, pointing out that terms can be defined, or scope disclaimed without an explicit statement, and that is what the Federal Circuit found.
The Federal Circuit noted that twice in the specification, the patentee states that the “byte sequence feature” is useful and informative “because it represents the machine code in an executable.” These, according to the Federal Circuit, were not simply descriptions of the preferred embodiment, but statements defining “byte sequence feature.” The Federal Circuit also relied upon a more explicit definition in the provisional application, pointing out that provisional applications incorporated by reference are “effectively part of the” specification as though it was “explicitly contained therein.”
The patentee pointed to at least one instance in the specification where “byte sequence feature” included more than machine code instructions, but the Federal Circuit said that this single sentence in the specification cannot overcome the overwhelming evidence in other parts of the specification and the provisional application demonstrating that the intended definition of this term does not include information other than machine code instructions.
Regarding the indefiniteness of the claims, the Federal Circuit noted that some of the claims “byte sequence feature,” which is a feature extracted from machine code instructions, with the extraction of “resource information,” which is not a machine code instruction. However rather than finding that this broadened the meaning of “byte sequence feature,” the Federal Circuit found that this was non-sensical, thus making the claims indefinite.
Regarding the claim term “probabilistic model of normal computer system usage” the Federal Circuit again found this term implicitly defined by consistent statements in the specification, the absence of embodiments inconsistent with the implicit definition, and statements in the provisional application, which was incorporated by reference, and arguments made in the prosecution history to distinguish some prior art. The patent owner pointed to applications incorporated by reference, but the Federal Circuit said that fleeting references cannot overcome the overwhelming evidence in the specification and the prosecution history, especially given the specification did not “even refer with any detailed particularity” to the passages the patent owner now argues support its construction.
Lastly, with regard to the term “anomalous” in the ‘115 and ‘322 patents. The Federal Circuit first observed that there was no reason why terms in the ”115 and ‘322 should be the same is the other patents in suit. Where multiple patents derive from the same parent application and share many common terms, one must interpret the claims consistently across all asserted patents. However, the Federal Circuit noted that patents resulted from two separate families, and these two families of patents claim two different inventions, list only one inventor in common, were filed years apart, and do not result from the same patent application. The Federal Circuit found affirmative reasons to construe the terms in the claims different, noting difference in the claims including claim differentiation, Finally the Federal Circuit noted that the description in the provisional application on which the patents were based supported the different construction.