In Allied Erecting v. Genesis Attachments, LLC, [2015-1533](June 15, 2016), the Federal Circuit affirmed the PTAB’s decision in IPR2014-001006 that claims 1–21 of U.S. Patent No. 7,121,489, were obvious.

Allied first challenged the motivation to combine the references,  arguing that the proposed combination would would entail design and structural changes. However, the Federal Circuit said that it is not necessary that the reference be physically combinable to render the claimed invention obvious.  The criterion is not whether the
references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.  The Federal Circuit added that the fact that a modification has simultaneous advantages and disadvantages does not necessarily obviate motivation to combine.

Allied also argued that the references teach away from the combination.  The Federal Circuit disagreed that the reference taught away from the combination, saying that teaching away is when a person of ordinary skill would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the patentee.  The Federal Circuit noted that the reference did not teach away from the combination because the reference did not address the structure of the second reference.

In Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, [2015-1425, 2015-1438] (May 31, 2016), the Federal Circuit affirmed the district court’s claim construction and resulting judgment of non-infringement.

At issue was whether U.S. Patent Nos. 5,912,895, 6,327,264, and 6,587,473 directed to for providing access to a local area network (LAN) from a relatively distant computer, and more particularly whether “communications path” is these patents was limited to wired paths, or whether communications path also included wireless paths.

The Federal Circuit first confirmed that the district court relied only on intrinsic evidence to construe the term “communications path,” and thus its review of that construction was de novo.

The Federal Circuit found no intrinsic or extrinsic evidence to support IWS’s
assumption that a person of ordinary skill at the time of invention would have understood the plain and ordinary meaning of “communications path” to include wireless communications.  The Federal Circuit observed:

1. The title of the patents indicates that they are directed to “Communicating Information Packets Via Telephone Lines.”
2. The specification describes “[t]his invention” as one “particularly
   concerned” with “two wire lines such as telephone
   subscriber lines.”
3. Every embodiment described in the specification utilizes a telephone
   wire, and when the specification clarifies that the full breadth of the invention is not limited to the expressed embodiments, it declares only that the patents may also
   reach any wired connection.
4. IWS did not present—nor did the district court consult—any extrinsic evidence, such as dictionaries, trade literature, expert testimony, or any other evidence showing that “communications path” was a term of art or otherwise understood to include wireless communications at the time of invention.

The Federal Circuit also found IWS’s claim differentiation arguments unpersuasive, because they did not necessarily broaden the independent claims to include wireless, as opposed to other forms of wired connections.

Finally, the Federal Circuit turned to the “canons” of claim construction, and in particular to the cannon that, “[i]f, after applying all other available tools of claim construction, a claim is ambiguous, it should be construed to preserve its validity.”  Applying this canon, the Federal Circuit noted that if the claims were not limited to wired communication paths, it would “would likely render the claims invalid for lack of written description.”  The Federal Circuit thus concluded that canon favoring constructions that preserve claim validity therefore counsels against construing “communications path” to include wireless communications.

The Federal Circuit thus affirmed the district court’s claim construction and its judgment of non-infringement.

On May 30, 1978, U.S. Patent No. 4,833,729 issued to Nelson C. Fox. Rosetta H.V.G. Fox on Shark Protector Suit.

In Diamond Coating Tech. v. Hyundai Motor, [2015-1844, 2015-1861] (May 17, 2016), the Federal Circuit affirmed the dismissal of a patent infringement action for lack of standing.

The Federal Circuit agreed that Diamond did not possess sufficient rights to make, use, on sell the patented invention, because its assignor Sanyo retained a right and license to make, use, and sell products covered by the patents-in-suit.  The assignment and transfer agreement did not even grant Diamond a right to practice the patents, limiting Diamond’s rights to the prosecution, maintenance, licensing, litigation, enforcement, and exploitation of the patents.

The Federal Circuit said that unless Diamond received all substantial rights in the patents-in-suit at the time it filed suit in the District Court, it was not a “patentee,” and it could not bring suit by itself.  The Federal Circuit said that Sanyo retained significant control over Diamond’s enforcement and litigation activities, and thus Diamond did not receive all substantial rights.

While Diamond and Sanyo executed nunc pro tunc agreements to purportedly clarify the parties’ original intent, the Federal Circuit held that its precedent (Alps South, LLC v. Ohio Willow Wood Co.) prevented nunc pro tunc assignments from conferring confer retroactive patentee status.

Often the appearance of an article is attributable to the nature of the surface as much as its shape.  Reflective surfaces are often depicted in design patent drawings as parallel lines, as in U.S.Patent No. D754125:

The test completes the disclosure: “The oblique shade lines in the Figures show a transparent, reflective, or shiny surface, and not surface ornamentation” (emphasis added).  Sometimes the surface is not reflective as much as the material is reflective.  This is commonly handled withing shading, and again an explanation in the text, as in U.S. Patent No. D733,397::”United States Patent: D733397 The stipple shading represents claimed reflective piping” (emphasis added).

On April 29, 2008, U.S. Patent No. 7,366,979 issued to Steven Spielberg and Samuel Gustman on a Method and Apparatus for Annotating a Document.  Yes — that Steven Spielberg.

Design patents protect the aesthetic appearance of a product or portion of the product.  The aesthetic appearance is affected by a number of things, including whether the product is illuminated.  However, how does one capture in the USPTO’s preferred black and white line drawings that fact that some or all of the design is illuminated?  Pretty much the way you would think.  Take, for example, U.S. Patent No. D688245 on a Contoured Mouse, which illustrates illumination with a burst of radiating dashed lines:

the patent explains that the “dash-dot-dash lines shown in Fig 8 represent the illumination at the finger wheel and these lines form no part of the claimed design.”  This same technique was used in U.S. Patent No. D688,664, also on a contoured mouse.

Discover Financial Service used a similar technique to illustrate an illuminated portion on their Discover Card in U.S. Patent No. D685419:

The patent explaining that “The circle is the boundary of the illuminated portion.  The radiating lines illustrate the glow of the illumination.”  Radiating lines were also used to indicate illumination on an MR scanner in U.S. Patent No. D682,026:

Still other examples include: an electronic data module with illuminated region in U.S. Patent No. D670696:

An illuminated cup rim in U.S. Patent No. D670419:

Illumination can be claimed in a design patent, it is simply a matter of illustrating the illumination in the drawings, and describing the drawings properly.

On April 28, 1992, U.S. Patent No. 5,107,620 issued to Richard E. Mahan on an Electrified Table Cloth.  The table cloth had a mini electric fence to keep crawling insects from joining the picnic.

Article I, Section 8, Clause 8 of the United States Constitution, empowers the United States Congress:

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

However, the patent laws enacted by Congress don’t always provide what the Constitution intended.  In Texas Advanced Optoelectrionic Solutions, Inc, v. Intersil Corp., [4:08-CV-451] the district court recently denied the plaintiff patent owner’s motion for a permanent injunction,finding a lack of irreparable harm.  The Court relied upon the fact that the patent owner “viewed a reasonable royalty as sufficient compensation for the Defendant’s past infringement,”  The Court then ordered the parties:

to negotiate a royalty rate to address any future harm to the Plaintiff for the remaining life of the ‘981 patent.  Such supplemental damages shall be for sales in the Unite States of products found to infringe the Plaintiff’s patent from March 2014 until the expiration of the patent.  The parties shall have 30 days from the entry of this order to negotiate a royalty rate.  If the parties require additional time, they may so move the court.  If the parties are unable to successfully negotiate a royalty rate, the Plaintiff may move the court to impose an ongoing royalty rate.

The case arose when, after entering a confidentiality agreement to explore a possible business relationship, Intersil misappropriated TAOS’ trade secrets, and wilffully infringed TAOS’ patent.  Despite Intersil’s bad conduct, and the fact the parties were actually competing in the marketplace, the Constitution’s promise of exclusivity is denied on principles of equity.

On April 20, 1837, Erastus B. Bigelow, received Patent No. 169 on a loom, for making carpets.