In Mag Aerospace Industries, Inc. v, B/E Aerospace, Inc., [2015-1370, 1426] (March 23, 2016), the Federal Circuit affirmed summary judgment of non-infringement, and the district court’s ruling that the doctrine of assignor estoppel barred B/E from challenging the validity of the patents.

One of the inventors of the patents-in-suit, Pondelick, now works for B/E..but Pondelick assigned the patents to his former employer, who in turn assigned them to MAG. The district court concluded that Pondelick was in privity with B/E and thus that assignor estoppel applied to bar B/E from attacking the validity of the patents.

The district court analyzed a number of factors identified in Shamrock Technologies to determine whether a finding of privity was appropriate:

1. the assignor’s leadership role at the new employer;
2. the assignor’s ownership stake in the defendant company;
3. whether the defendant company changed course from manufacturing non-infringing goods to infringing activity after the inventor was hired;
4. the assignor’s role in the infringing activities;
5. whether the inventor was hired to start the infringing operations;
6. whether the decision to manufacture the infringing product was made partly by the inventor;
7. whether the defendant company began manufacturing the accused product shortly after hiring the assignor; and
8. whether the inventor was in charge of the infringing operation.

The district court acknowledged B/E’s arguments but found on balance that assignor estoppel was appropriate. The Federal Circuit found that the district court’s conclusion was not clearly erroneous, agreeing that many of the Shamrock factors weigh in favor of finding privity.

Of course the PTAB does not apply Assignor Estoppel, so patent challengers should raise their challenges there, and patent assignees should consider language in their assignments to forestall such challenges.

In Luminara Worldwide, LLC v, Liown Electronics Co., Ltd., [2015-1671] (February 29, 2016), the Federal Circuit vacated a preliminary injunction on U.S. Patent Nos. 7,837,355; 8,070,319; and 8,534,869, directed to flickering artificial candles.  The Federal Circuit rejected the accused infringer’s challenge that plaintiff did not have sufficient rights to enforce the patents, but agreed that there were substantial questions about the patent’s validity,

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.

On January 19, 1905, U.S. Patent 1,125,476, issued to Georges Claude on a System of Illuminating by Luminescent Tubes.

Although the inventor was from Paris, his invention developed into an American classic – the neon sign.

Finding the perfect words to describe an invention is the cross that patent attorneys have to bear.  When trying to describe something that it cross-shaped, the word cruciform (see, e.g., U.S. Patent No, 8,517,327) can make the job a litte easier.

U.S. Patent No. 8,517,327 shows a cruciform or cross shaped element.

Cruciform is a fairly mainstream option, appearing in more than 7141 U.S. patents, cross-shaped appears in more than 11819 patents.

Supreme Court granted Cuozzo’s Petition for Certiorari regarding two important questions affecting post-grant reviews:

1. Whether the Court of Appeals erred in holding that in proceedings, the Board may construe claims of an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2. Whether the Court of Appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR Proceeding is judicially unreviewable.

Cuozzo received support from 3M Company, Bristol-Myers Squibb Co., Cargill Incorporated, Caterpillar Inc., Eli Lilly and Company, GlaxoSmithKline LLC, Illinois Tool Works Inc., Johnson & Johnson, Monsanto Company, Pfizer Inc., The Procter & Gamble Company, Qualcomm Incorporated and Sanofi US filed an amici curiae brief, as did the Biotechnology Industry Organization, the American Intellectual Property Law Association, The Pharmaceutical Research And Manufacturers America,  Intellectual Property Owners Association, The Intellectual Property Law Association of Chicago, New York Intellectual Property Law Association, Interdigital, Inc., Tessera Technologies, Inc., and Fallbrook Technologies, Inc. and Trading Technologies International, Inc.

These are both important questions.  With respect to the use of BRI in post grant proceedings, the USPTO’s use of this examination standard where the patent owner is essentially disabled from amending the claims is unfair.  With respect to reviewing institution decisions, it would be remarkable that a decision by the PTAB or any government agency could be completely immune from review, no matter how contrary to the statute.

Lexicography – the power to define words – is heady stuff (at least for your typical mild-mannered patent prosecutor). It would seem that this power would be most responsibly applied to words that had no meaning, rather than redefining a word with an established meaning.  Here are few examples of made up words and their meanings:

Doohickey

U.S. Patent No. 8,042,274 did not define doohickey in words, but rather instructs that a doohickey is shown in Fig. 5:

So at least now, you will know one when you seen one.

Thingamajig

Thingamajig has not been expressly defined in any patent, but it must be a kind of disc drive system, appearing in two Seagate Technology patents (6,411,454 and 7,209,304), the latter stating:

an including a bonus reference to “gadget.”  Speaking of gadget:

Gadget

Before its recent appropriation by computer geeks,  “gadget” was a generic reference to a device, see in U.S. Patent No. 3,998,694, and sometimes a pejorative reference (e.g., 4,019,313 or 4,101,130).  Appearing in nearly 2000 patents, “gadget” has taken a wide variety of meanings.  In U.S. Patent No. 5,005,336 it is tool that helps turn a coconut into an envelope.

There are even devices to organize one’s gadgets: D316,502 and D312,559 and D303552, and even one to help you find them when they are lost: D726,691.  Of course gadget was the code name for the first atom bomb, making all other uses trivial in comparison.

Doodad

U.S. Patent Nos. 6,398,058 and 7,004,347 gives us a definition of doodads: “small miscellaneous items, e.g., paper clips, rubber bands, buttons, etc.” and even provides a cup 10 to hold them.  Although in U.S. Patent Nos. 6,106,300 and 6,890,179, a doodad is an “expense.”

 Widget

U.S. Patent No. 9,225,817, explains that “widget” is “a  contraction of ‘window gadget,'” and “refers to components in a graphical user interface (GUI).”  However the use predates the computer age, and the word can be found in more than 7,000 patents.

Gizmo

Gizmo is used in more than 200 patents, mostly to refer to some non-specific device.  It is apparently part of some prosecutor’s stock language, because most of the uses are along the lines of:

The words “comprising,” “including,” and “having” are always open-ended, irrespective of whether they appear as the primary transitional phrase of a claim, or as a transitional phrase within an element or sub-element of the claim (e.g., the claim “a widget comprising: A; B; and C” would be infringed by a device containing 2A’s, B, and 3C’s; also, the claim “a gizmo comprising: A; B, including X, Y, and Z; and C, having P and Q” would be infringed by a device containing 3A’s, 2X’s, 3Y’s, Z, 6P’s, and Q).