About bwheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University

“A Processor” Can Mean More Than One Processor, But At Least One of Multiple Processors Has to be Capable of Performing All of “Said” Processor’s Functions

Posted on April 5, 2023 by bwheelock

In Salazar v. AT&T Mobility LLC, [2021-2320, 2021-2376] (April 5, 2023), the Federal Circuit affirmed judgment of noninfringement of U.S. Patent No. 5,802,467 describing technology for wireless and wired communications.

Claim 1 of the ‘467 patent required “a microprocessor for generating a plurality of control signals used to operate said system, said microprocessor creating a plurality of reprogrammable communication protocols, for transmission to said external devices wherein each communication protocol includes a command code set that defines the signals that are employed to communicate with each one of said external devices.” The district court construed the court construed “a microprocessor” to mean one microprocessor.”

On appeal, Salazar argued that the court should have interpreted a microprocessor” to require one or more microprocessors, any one of which may be capable of performing each of the “generating,” “creating,” and “retrieving” functions recited in the claims.

The Federal Circuit explained that the indefinite article “a” means “‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” The Court said an exception to the general rule that “a” means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.” The Federal Circuit further explained that the use of the term “said” indicates that this portion of the claim limitation is a reference back to the previously claimed” term. The claim term “said” is an “anaphoric phrase, referring to the initial antecedent phrase”. The subsequent use of the definite article ‘said’ in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning.”

The Federal Circuit reviewed prior cases interpreting “a” and noted in particular In re Varma, 816

F.3d 1352 (Fed. Cir. 2016), which the district court had explained that the claim term provided certain functions that the “said microprocessor” must be “necessarily configured to perform as well as the structural relationship between ‘said microprocessor’ and other structural elements.” Thus, the district court reasoned, “at least one microprocessor must satisfy all the functional (and relational) limitations recited for ‘said microprocessor.’ On appeal, Salazar’s argued that a correct claim construction would encompass one microprocessor capable of performing one claimed function and another microprocessor capable of performing a different claimed function, even if no one microprocessor could perform all of the recited functions. The Federal Circuit rejected this argument, agreeing with the district court that while the claim term “a microprocessor” does not require there be only one microprocessor, the subsequent limitations referring back to “said microprocessor” require that at least one microprocessor be capable of performing each of the claimed functions, which the Court said was “entirely consistent” with it precedents. The Court noted that, as it stated in Varma, for a dog owner to have a dog that rolls over and fetches sticks, it does not suffice that he have two dogs, each able to perform just one of the tasks.

St. Patrick’s Day 2023

Posted on March 17, 2023 by bwheelock

Shamrocks, Leprechauns, and pots of gold are hard to find (except on St. Patrick’s Day), but the hunting is good in the patent collection:

One of the Novelty Displays in U.S. Patent No. 2,101,592 is this Leprechaun’s hat with a shamrock

U.S. Patent No. 7,530,893 on a Wagering Game with Dynamic Visual Gaming Indicia shows Leprechauns and pots of gold on the game display

U.S. Patent No. 8,273,441 on a Garage Door Display and Decorative Article features a pot of gold and a shamrock

U.S. Patent No. 5,487,924 on a Napkin Ring features a Leprechaun and a pot of gold

U.S. Patent No. 6,276,074 features an article of footwear with a leprechaun decoration

U.S. Patent No. D2348 covers a shamrock decoration for a collar

U.S. Patent No. D5777 covers a badge decorated with two springs of shamrocks (b)

U.S. Patent No. D12927 on a Design for an Emblem for the Ancient Order of Hibernians features shamrocks

U.S. Patent No. D19577 protects the design of a Bottle with a shamrock shape

U.S. Patent No. 21304 protects the design of a Spoon with a spray of shamrock

U.S. Patent No. D 22,226 protects the design of a Badge with a shamrock shape

U.S. Patent No. 31401 on a Match Box or Similar Article is decorated with shamrocks

While shamrocks, Leprechauns, and pots of gold are usually scarce in the real world (except on St. Patrick’s Day), they are pretty easy to find in the world of patents. Happy St. Patrick’s Day!

March 8, 2023 – International Women’s Day

Posted on March 8, 2023 by bwheelock

International Women’s Day is a global day celebrating the social, economic, cultural and political achievements of women. In the field of inventions and patents, there are many important and prolific women inventors, but one worthy of remembrance on International Women’s Day is Elizabeth J. “Lizzie” Magie was born in Macomb, Illinois in 1866. She was a stenographer, short story and poetry writer, comedian, stage actress, feminist, and engineer. In 1893, at the age of 26, Lizzie received her first patent on an improvement in typewriters:

U.S. Patent No. 498129 issued May 23 1893 on a Type Writing Machine

Lizzie was a political activist, and invented a game called The Landlord’s Game to demonstrate the economic ill effects of land monopolism, and the use of taxes as a remedy for it. Lizzie applied for a patent on her board game, and was granted U.S. Patent 748,626 on January 5, 1904:

U.S. Patent No. 748626, Issued January 5, 1904.

As her first patent on the Landlord’s game was expiring, Lizziey, now married, invented and patented an updated version of the Landlord’s Game:

U.S. Patent No. 1,509,312 issued September 23, 1924.

If Lizzie’s game seems familiar, you may be thinking of C.B. Darrow’s Monopoly game, patented in 1935 and marketed by Parker Brothers.

U.S. Patent No. 2,026,082, issued December 31, 1935.

After the release of Monopoly, Lizzie gave in interview in which she was critical of Parker Brothers, and identified the similarities between Monopoly and The Landlord’s Game. Parker Brothers agreed to publish two more of her games, but continued to give Darrow the credit for inventing the game itself. Many years later, Ralp Anspach stumbled upon Lizzie’s patents while fighting his own legal battle with Parker Brothers over Anspach’s Anti-Monopoly game, which resulted in increase appreciate for Lizzie’s contribution to the game.

Wikipedia reports that Lizzie believed that women were as capable as men in inventing, business, and other professional areas. She was correct then, and for that, worthy of remembrance now.

A System is Not a Method (Unless §101 is Involved)

Posted on February 24, 2023 by bwheelock

In Jazz Pharmaceuticals, Inc., v. Avadel CNS Pharmaceuticals, LLC, [2023-1186] (February 24, 2023) the Federal Circuit lifted its stay on an injunction directing Jazz to take measures to delist U.S. Patent 8,731,963 from the FDA’s orange book, and affirmed the district court’s decision.

Claim 1 of the ‘963 patent was directed to “A computer-implemented system for treatment of a narcoleptic patient with a prescription drug that has a potential for misuse, abuse or diversion.” Claim 6, the other claim at issue, was dependent on claim 1. Under the Hatch-Waxman Act (21 U.S.C. § 355(b)(1)(A)(viii)), when a drug developer files an NDA, information on each patent “for which a claim of patent infringement could reasonably be asserted” must be submitted to the FDA if the patent claims either (i) the drug submitted for approval, or a formulation or composition thereof, or (ii) “a method of using such drug for which approval is sought or has been granted in the application.”

Avadel responded to Jazz’s infringement assertions with a counterclaim seeking delisting of the ’963 patent for failure to claim a drug or method of use. In evaluating the counterclaim, the district court found that, as a matter of claim construction, the ’963 patent claims a system and thus does not claim an approved method of use. The district court subsequently ordered Jazz to ask the FDA to delist the ’963 patent. Jazz filed a notice of appeal and moved the district court to stay the injunction pending appeal, when the district court denied the stay, the Federal Circuit extended the stay until it could evaluate the issue on the merits.

The district court determined that the ’963 patent claims recited systems, not methods. Jazz contends that the word “system” as it appears in the ’963 patent claims is, essentially, a synonym for “method.” But, the Federal Circuit noted, method claims require the performance of steps; claims that describe physical components of a whole are system, or apparatus, claims. The Federal Circuit said that the fact that the claimed systems can be used in the course of treating patients suffering from narcolepsy did not alter the fact that these are system claims. It therefore found that the claims of the ’963 patent were properly construed by the district court as system claims, not method claims.

Jazz contended that FDA regulations which describes listing patents that “claim conditions of use,” yields a broader definition of “method” than permitted by the language of patent law and that this broader definition encompasses the claims of the ’963 patent. Jazz argued that since prescribers were bound to follow the system in treating patients with narcolepsy. The Federal Circuit said that Jazz misread the

regulation describing method-of-use patents. The regulations do not broaden the term “method” such that reciting a condition of use turns a system patent into a listable method-of-use patent. Rather, this regulation narrows that category of listable patents to those that (1) claim methods of use, wherein (2) those methods of use are directly relevant to the NDA in question.

The Federal Circuit thus affirmed the district court, and lifted the stay, restarting the 14-day period for compliance prescribed by 21 C.F.R. § 314.53(f)(2)(i) to be within 14 days of its

decision. Although not directly relevant, it is interesting to note that the Federal Circuit approves treating apparatus claims like method claims in §101 eligibility analysis. Too bad that that reasoning didn’t work for Jazz.

Mardi Gras 2023

Posted on February 21, 2023 by bwheelock

From masks to beads, patents protect a number products for celebrating Mardi Gras, including:

U.S. Patent No. 4,864,663 protects an integral costume mask and display headgears, suitable for Mardi Gras celebrations:

U.S. Patent No. 5,135,390, protects a Flambeau Torch:

U.S. Patent No. 5,219,069 protects a chainable Plastic Coin Holder for collecting Mardi Gras coins:

U.S. Patent No. 5,787,508 protects a Decorative Mask Assembly suitable for Mardi Gras celebrations:

U.S. Patent No. 5,896,756 discloses a Soft Necklace suitable for throwing at Mardi Gras:

U.S. Patent No. 6,296,364 discloses a Lighted Bead Necklace, suitable for wearing at Mardi Gras:

U.S. Patent No. 6,578,981 discloses another version of a Lighted Bead Necklace suitable for wearing at Mardi Gras:

U.S. Patent No. 6,991,141 discloses Methods of Producing and Treating Twisted Beads for Mardi Gra celebrations:

U.S. Patent No. 8,672,169 protects a Novelty Cup with Jewelry for your Mardi Gras libations:

U.S. Patent No. D611117 protects a Mardi Gras Doubloon Fishing Lure:

U.S. Patent No. 8,082,753 protects Beverage Bead for holding your Mardi Gras hurricane:

Presidents Day 2023

Posted on February 20, 2023 by bwheelock

U.S. Patent No. 5,288,076 turns presidential election into a game (funny how patents imitate life):

U.S. Patent No. 2536 protects the appearance of an Andrew Jackson medal:

U.S. Patent No. 3274 protects the appearance of a Design for a Clock Case, featuring Abraham Lincoln.

U.S. Patent No. 2983 protects the appearance of a sculpture of Abraham Lincoln and his Council of War:

U.S. Patent No. 6071 protects the appearance of a medal featuring President Grant (and Senator H. Wilson:

U.S. Patent No. 8581 protects the design of a medal featuring a tree with eighteen
branches representing the eighteen administrations, which are indicated by the names of the
Presidents of the United States:

U.S. Patent No. D8593 protects the appearance of a flag with the names of the first eighteen presidents:

U.S. Patent No. 169085 protects a Revolving Game Apparatus, featuring the first eighteen presidents:

U.S. Patent No. D9239 protects the appearance of a badge with the images of George Washington and Ulysses Grant.

U.S. Patent No. 9418 protects the design for a charm, medal, or badge that features the image of Rutherford B. Hayes, and William A. Wheeler:

U.S. Patent No. D9482 protects the design of a shirt with the images of Rutherford B. Hayes and William A, Wheeler.

A Court Can Only Enjoin Public Accusations of Infringement if They Are Objectively Baseless

Posted on February 17, 2023 by bwheelock

In Lite-Netics, LLC v. Nu Tsai Capital, LLC, [2023-1146] (February 17, 2023), the Federal Circuit vacated a preliminary injunction against Lite-Netics patent-related speech, holding that the district court abused its discretion.

Lite-Netics brought a patent-infringement action against HBL, and sent two notices,
one before filing suit and one after, to its customers (some of which were also HBL customers), informing them of allegedly infringing competitors in the market and stating Lite-Netics’s intent to enforce its patent rights. HBL counterclaimed for several state-law torts, and moved for a temporary restraining order and a preliminary injunction, based on two of the state law counterclaims, which the district court granted.

Lite-Netics owns multiple patents on magnetic holiday string lights. HBL, a former customer of Lite-Netics, also sells holiday string lights.

Lite-Netics owns multiple patents on magnetic holiday string lights. HBL, a former customer of Lite-Netics, also sells holiday string lights. Lite-Netics send a notice to the trade that Lite-Netics’s magnetic string lights were protected by U.S. Patent Nos. 7,549,779 and 8,128,264; that other companies were attempting to “copy” Lite-Netics’s patented products; that Lite-Netics had filed a patent infringement lawsuit against HBL to stop it from making and selling infringing products; and that Lite-Netics was also considering including any known company using or reselling the HBL products as co-defendants in this lawsuit.

The district court addressed (1) the likelihood of HBL’s success on the merits of its tortious-interference and defamation claims; (2) the likelihood of irreparable injury
to HBL without the injunction; (3) the balance of equities; and (4) the public interest.

In considering the first factor, the court recognized that state-law tort claims based on the communication of patent rights, such as HBL’s tortious-interference and defamation claims, “are preempted by federal patent laws, unless the claimant can show that the patent holder acted in bad faith.” However the district court concluded that HBL’s state-law tort claims were not preempted here, centrally because it held that Lite-Netics’s infringement allegations were so clearly meritless that their assertion was in bad faith. On that basis, the court ruled that HBL would likely succeed on its tortious-interference and defamation claims
and that the preliminary injunction should issue, because the non-merits preliminary-injunction considerations favored issuance.

The Federal Circuit has held that federal patent law preempts state law tort liability for a patentholder’s good faith conduct in communications asserting infringement of its patent and
warning about potential litigation. Thus, the Federal Circuit said that HBL’s state-law claims
here thus can survive federal preemption only to the extent that those claims are based on a showing of ‘bad faith’ action in asserting infringement. The requirement of a showing of bad faith as prerequisite to applying state tort law to speech about infringement rests partly on First Amendment principles. Thus, a bad faith standard cannot be satisfied in the absence of a showing that the claims asserted were objectively baseless, and a patent-infringement allegation is objectively baseless only if no reasonable litigant could realistically expect
success on the merits.

Lite-Netics argued on appeal that the district court erred in finding its infringement allegations concerning the ’779 patent, and its application to both accused products, to be objectively baseless, and the Federal Circuit agreed. Because there was an objectively reasonable basis for many of Lite-Netics’s infringement allegations, the district court abused its discretion in finding that Lite-Netics could not have “realistically expect[ed] success on the merits” and, therefore, acted in bad faith.

The Federal Circuit noted that the preliminary injunction was to a large extent based on three legal conclusions with respect to Lite-Netics’s assertion of the ’779 patent, but concluded that Lite-Netics’s position on all three of those disputes has not been shown, at this stage of the litigation, namely before full claim-construction proceedings or possible expert reports on infringement), to be objectively baseless. That conclusion requires vacatur of the preliminary injunction, without finally resolving the underlying disputes about claim construction, prosecution history estoppel, or other issues.

Storing and Displaying Video is an Abstract Idea

Posted on February 17, 2023 by bwheelock

In Hawk Technology Systems, LLC v. Castle Retail, LLC, [2022-1222] (February 17, 2022), the Federal Circuit affirmed the dismissal of the suit because the asserted patent claims of U.S. Patent No. 10,499,091 on a method of viewing multiple simultaneously displayed and
stored video images on a remote viewing device of a video surveillance system were directed to ineligible subject matter and therefore invalid under 35 U.S.C. § 101.

The district court concluded that the ’091 patent claims were directed to the abstract idea of “storing and displaying video,” and the Federal Circuit agreed, noting that the claims are similar to those it has found to be directed to abstract ideas. The Court noted that in Adaptive Streaming Inc. v. Netflix, Inc., 836 F. App’x 900, 903 (Fed. Cir. 2020), it held that “encoding and decoding image data and . . . converting formats, including when data is received from one medium and sent along through another, are by themselves abstract
ideas.”

While Hawk characterized its invention as a solution to a technical problem in multi-format digital video product systems, the Federal Circuit pointed out that even a specification full of technical details about a physical invention may nonetheless conclude with claims that claim
nothing more than the broad law or abstract idea underlying the claims. The claims fail to recite a specific solution to make the alleged improvement— conserving bandwidth while preserving quality—“concrete” and at most recite abstract data manipulation.

At Alice step two, the Federal Circuit said that the district court found that the claims, “read in light of the specification, do not show a technological improvement in video storage and display because the limitations can be implemented using generic computer elements,” and that the “specification and claims do not explain or show how the monitoring and storage is improved, except by using already existing computer and camera technology,” and thus the claims failed at Alice step two. The Federal Circuit agreed.

Again, Hawk argued that the claims recite an inventive solution, but the Federal Circuit said that even if the claims achieved the purported solution, they only use generic functional language to do so and require nothing other than conventional computer and network components operating according to their ordinary functions. The Federal Circuit said that it recognize that the claims include “parameters,” but the claims fail to specify precisely what the parameters are and the parameters at most concern abstract data manipulation image formatting and compression.

The Federal Circuit therefore found that the ’091 patent claims fail to transform the abstract idea into something more and thus fail Alice step two. The Court that held that the ’091 patent is patent ineligible because its claims are directed to an abstract idea and fail to
transform that abstract idea into patent-eligible subject matter.

Functional Medical Device Demonstrated at Trade Show Trigged On Sale Bar of pre-AIA 102(b)

Posted on February 16, 2023 by bwheelock

In Minerva Surgical, Inc. v. Hologic, Inc., [2021-2246] (February 15, 2023), the Federal Circuit affirmed summary judgment that the asserted claims of U.S. Patent No. 9,186,208 on surgical devices for a procedure called endometrial ablation were anticipated under the public use bar of pre-AIA 35 U.S.C. § 102(b).

The Federal Circuit first pointed out that the patented technology was “in public use” because, before the critical date, Minerva disclosed fifteen devices having the technology at AAAGL 2009, an industry related event dubbed “the Super Bowl of [the] industry” by one of the inventors. Minerva’s disclosure of these devices spanned several days and included Minerva showcasing them at a booth, in meetings with interested parties, and in a technical presentation, and a brochure. Minerva did not disclose the devices under any confidentiality obligations, despite the commercial nature of the event. The Federal Circuit said that an invention is in public use if it is shown to or used by an individual other than the inventor under no limitation, restriction, or obligation of confidentiality.

The Federal Circuit then pointed out that at the time of the public use, the technology
was “ready for patenting.” Specifically, Minerva had created working prototypes and enabling technical documents describing the claimed technology. The Federal Circuit said that “ready for patenting can be shown in at least two ways: (1) a reduction to practice before the critical date; (2) or proof that before the critical date the inventor had prepared drawings or other descriptions of the invention sufficiently specific to enable a person or ordinary skill in the art to practice the invention.

Minerva raised three reasons why the invention was not in public use at the AAGL 2009″ First, Minerva argued that it “merely displayed” the device. The Federal Circuit rejected this, noting that the device was actually demonstrated with a transparent uterine model. The Federal Circuit distinguished Motionless Keyboard relied upon by Minerva, because that case involved a visual view of the device without any disclosure of the claimed technology,and finding that Minerva’s disclosure went “well beyond” the disclosure in Motionless Keyboard. Second, Minerva argued that there was no disclosure of the claimed invention. The Federal Circuit rejected the contention that the public had to actually handle the device, saying that all is required is that the public understood the invention, and the feedback collected from the AAGL 2009 showed that Minerva allowed knowledgeable individuals to scrutinize the invention enough to recognize and understand the technology Minerva later sought to patent. Third, Minerva argued that the invention was not “ready for patenting” because Minerva was still making improvements. The Federal Circuit rejected this for two reasons: (1) Minerva reduced the invention to practice and (2) Minerva had enabling documentation describing the invention.

The Federal Circuit then concluded that district court thus correctly granted summary judgment of invalidity because there are no genuine factual disputes, and defendants are entitled to judgment as a matter of law that the asserted claims are anticipated under
the public use bar of § 102(b).