On January 14, 1964, U.S. Patent No. 3,118,022, issued to Gerhard Sessler and James West on the electret
microphone.
Monthly Archives: January 2016
Just Because You Can, Doesn’t Mean You Should
In Ethicon Endo-Surgery, Inc. v. Covidien LP, [2014-1771](January 13, 2016), the Federal Circuit held that the same panel of the PTAB can make the decision to institute an IPR and the final written decision, and that the PTAB did not err in finding the claims obvious.
The Federal Circuit held that neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination, rejecting Ethicon’s challenge that this process raises “serious due process concerns.” The Federal Circuit said that combining the decision to institute with the final decision in a single panel is less problematic than other procedures approved by the Supreme Court. The Federal Circuit said that both the decision to institute and the final decision are adjudicatory decisions that do not involve combining investigative and/or prosecutorial functions with an adjudicatory function, and found the procedure directly analogous to a district court determining whether there is “a likelihood of success on the merits” and then later deciding the merits of a case.
Even if not Constitutionally infirm, a procedure that requires a panel of the Board to decide to institute without receiving evidence from the patent owner, and then deciding whether they were wrong does seem to be biased against the Patent Owner. The USPTO proposed a pilot program, under which an IPR trial will be conducted by a panel of three APJs, two of whom were not involved in the determination to institute the IPR. The USPTO published a request for comments in the Federal Register on August 25, 2015, seeking public comment on the proposed pilot program, and the comment deadline was later extended to November 18, 2015. The AIPLA weighed-in in favor of the change, noting that it would remove the actual or perceived bias in the process.
January 13 Patent of the Day
On January 13, 1943, Henry Ford was granted U.S. Patent Nos. 2,269,451 and 2,269,452 on the construction of a plastic automobile.
Ford hoped to make automobiles from renewable agricultural plastic panels of soybean and hemp, developed by George Washington Carver. World War II brought automobile production to a halt, and after the war interest in the car waned.
January 12
On January 12, 1960, Arnold Junker, was issued U.S. Patent No. 2,920,841 on a Helicopter with Body Attaching Means.
Perhaps the most remarkable thing about the patent is how happy the test subject looks facing certain doom.
Fenestrated- the Right Word for the Right Shape
Patent attorneys are often grasping for words to describe openings, and a word to describe some with one or more openings is fenestrated (see U.S. Patent No. 8,506.984).
U.S. Patent No. 8,506,904, shows a fenestrated portion of a device having a plurality of openings.
Fenestrated appears in more than 1318 U.S. Patents,
January 11
On January 11, 1994, Elaine Rossignol and Michael Kominsky obtained U.S. Patent No. 5,277,148 on the Wearable Pet Enclosure. This was significant because it allowed crazy cat people to become mobile.
January 10
On January 10, 1843, Charles T. Sage obtained U.S. Patent No. 2,906 on a syringe, much to the chagrin of enetophobics everywhere. Sage used the syringe to cure hernias, which is even scarier.
January 9
On January 9, 1979, U.S. Patent No. 4,133,315 issued to Edward J. Berman and George A. Rowe for a Method and Apparatus for Reducing Obesity. Ed and George inflate a bag in your stomach to make you feel full. There has to be a better way to keep your New Year’s resolutions.
Court Can’t Change the Claim Construction After a Verdict
In Wi-Lan, Inc. v. Apple Inc., [2014-1437, 2014-1485] (Fed. Cir. 2016), the Federal Circuit reversed the trial court’s JMOL determination of no invalidity of U.S. Patent No. RE37,802 because it was based on a post-verdict reconstruction of the claims.
The jury found the claims invalid, but on JMOL the trial court determined that, although its earlier construction of computing means does not specifically provide for a complex multiplier, a complex multiplier was nevertheless necessary because expert witnesses from both sides agreed that complex multiplies are part of the structure of a first computing means. Since it was undisputed that such complex multipliers are absent from the prior art, the trial court granted JMOL that the claims were not invalid.
The Federal Circuit agreed with Apple that the district court’s postverdict addition of a complex multiplier requirement was a new claim construction, which the district court may not issue at the JMOL stage. The Federal Circuit said that it is too late at the JMOL stage to argue for or adopt a new and more detailed interpretation of the claim language and test the jury verdict by that new and more detailed interpretation. At the JMOL stage, the question for the trial court is limited to whether substantial evidence supports the jury’s verdict under the issued construction.
The Federal Circuit rejected Wi-Lan’s argument that this was a permissible clarification, rather that impermissible reconstruction. The Federal Circuit said that a trial court may “adjust constructions post-trial if the court merely elaborates on a meaning inherent in the previous construction.” Clarification is permissible where it only makes plane what should have been obvious to the jury.
The Federal Circuit said that the district court’s JMOL of no invalidity was based on a reconstruction of the claims that went far beyond clarifying a meaning inherent in the construction or making plain what should have been obvious to the jury. Instead, the post-verdict reconstruction altered the scope of the original construction and undermined Apple’s invalidity case post-verdict.
It is Obvious to Vary Result-Effective Variables
In In re Urbanski, [2015-1272] (Fed. Cir. 2016), the Federal Circuit affirmed the PTAB’s affirmance of the rejection on obviousness grounds of claims to a method for making an enzymatic hydrolysate of a soy fiber.
The Federal Circuit agreed with the Board that Gross and Wong related to methods of enzymatic hydrolysis of dietary fibers, are readily combinable, and that they recognize that reaction time and degree of hydrolysis are result-effective variables that can be varied in order to adjust the properties of the hydrolyzed fiber in a predictable manner. The Federal Circuit found that substantial evidence thus supports the Board’s finding that a person of ordinary skill would have expected that, by adjusting the reaction time, the degree of hydrolysis and the properties of the fiber would be altered.
The Federal Circuit said that the prima facie case had not been rebutted. There was no evidence that the claimed ranges of degree of hydrolysis, water holding capacity, and free simple sugar content are “critical” or “produce a new and unexpected result” as compared to the prior art. The Federal Circuit also noted that there is also no evidence that the “variables interacted in an unpredictable or unexpected way,” which could render the claims nonobvious.
Urbanski argued that modifying the Gross process by shortening the hydrolysis time, as taught by Wong would make the Gross process inoperative for its intended purpose. The Federal Circuit recognized that teaching away is applicable to cases involving mechanical devices or apparatus claims, but that on the record before it, the Board properly found that one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong, even at the expense of foregoing the benefit taught by Gross. Nothing in the prior art teaches that the proposed modification would have resulted in an “inoperable” process or a dietary fiber product with undesirable properties.
The Federal Circuit agreed that the claimed invention was obvious.