Monthly Archives: February 2024

February 29, 2024 — No Leap Patents This Year

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Of course. today being a Thursday, no U.S. patents will issue today, A patent issuing on February 29 is a relatively rare thing. In fact, in the history of the U.S. Patent Office, only about 6787 patents have issued on February 29. Leap patents issued in 1820, 1848, 1876, 1916, 1944, 1972, and 2000. The last utility patent to issue on February 29 was U.S. Patent No. 6,032,181:

The last design patent to issue on February 29 was U.S. Patent No. D421277

There won’t be another February 29 U.S. patent until February 29, 2028.

The Attorney Knew the Applicant Abandoned Five Years Ago, But Neither He (Nor Morgan Fairchild) Knew if That is What Applicant Intended

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In Freshub, Inc. v. Amazon.com, Inc., [2022-1391, 2022-1425] (February 26, 2024), the Federal Circuit affirmed the jury verdict that Amazon did not infringe U.S. Patent No. 9,908,153, and the district court’s finding that it failed to prove inequitable conduct in reviving a patent application five years after it abandoned.  The ’153 patent claims a voice-processing system that receives “user spoken words” and adds items to lists based on those words.

The district court found that, while the parties did not dispute the materiality of the representation that the application had been unintentionally abandoned, Amazon had not offered clear and convincing evidence that the representation was actually false—i.e., that Ikan had in fact intentionally abandoned the ’291 application. Id. at 9–10. The district court also found that, even if the representation had actually been false (i.e., even if Ikan had intentionally abandoned the application), Amazon had not offered clear and convincing evidence that the “single most reasonable inference” from the evidence, as required by Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc), was that either Ikan or its attorney had specifically intended to deceive the PTO with the STATEMENT in the petition to revive the application in 2017.

To prevail on the defense of inequitable conduct, the accused infringer must prove that the applicant misrepresented or omitted material information with the specific intent to deceive the PTO.  The proof must be by clear and convincing evidence.  Amazon asserted that the false and material statement was the denial by Ikan’s counsel that  Ikan abandoned the ’291 application intentionally during the 2012–17 non-response period.  The district court also found, however, that Amazon did not prove, by clear and convincing evidence, that the statement was a misrepresentation made with the required deceptive intent.

The Federal Circuit noted that it cannot disturb the district court’s rejection of the inequitable-conduct defense unless we have the definite and firm conviction that the evidence required the district court to find that Amazon proved, clearly and convincingly, that the “single most reasonable inference” from the record, was that Ikan’s counsel, when making his 2017 statement to the PTO, in fact believed that Ikan had intentionally abandoned the ’291 application for the 2012–17 period of nonresponse to the PTO. The Federal Circuit did not so find.

The Federal Circuit noted that for various reasons, including the passage of time and the limited testimonial and documentary evidence available—the latter due in part to invocations of attorney-client privilege not challenged on appeal—the record of what actually occurred at relevant times was thin. On that record, the district court found that Amazon did not clearly and convincingly prove Ikan’s intentional abandonment.

The Federal Circuit said that counsel’s statement itself can weigh in the evidentiary calculus even when it is not backed up affirmatively with a more granular and concrete account of how the five-year non-response to the PTO occurred— an account that might detail, for example, whether communications from counsel in 2012 failed to reach or inform the relevant decisionmaker at Ikan and whether years of inattention to this particular matter ensued because the attention of the company and counsel was elsewhere. Of course, the absence of such an account, due to unavailability of witnesses or invocations of attorney-client privilege or other reasons, might well lead a factfinder to find false, or even knowingly false, the assertion that the abandonment was unintentional on Ikan’s part. The Federal Circuit said the evidence clearly shows that Ikan’s counsel knew that the application had been abandoned, as he testified, but whether he made his statement with deceptive intent depends on what he believed about the subject of his statement, namely, the intent behind the abandonment.  The district court could find that counsel genuinely so believed, whether or not the belief was legally correct, and that counsel did not think that Ikan had the intent to abandon during the 2012–17 non-response period.  The Federal Circuit said that finding was not clearly erroneous, in light of the facts, and the district court could therefore reasonably hold deceptive intent not proven under the governing legal standard.

Happy Birthday, George Washington

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In the good old days, George Washington’s birthday was holiday, making February a great month for school kids, because Abraham Lincoln’s birthday was also a holiday. Two days off in the bleakest month, coupled with cupcakes on Valentine’s Day, and it was a great month to be in grade school. In addition to being celebrated by generations of school children, Inventors have celebrated George Washington many times, including in these ten patents:

U.S. Patent No. D8377 protects a Medal honoring George Washington:

U.S. Patent No. D9138 also features George Washington:

U.S. Patent No. D9161 on a badge featuring George Washington:

U.S. Patent No. D9247 is on a hatchet centennial charm that features George Washington:

U.S. Patent No. D9310 on a fan design features both George and Marth Washington and their Mount Vernon estate:

U.S. Patent No. D9310 protects a statue of George Washington:

U.S. Patent No. D17839 protects a badge featuring Geroge Washington:

U.S. Patent No. D21,357 protects a spoon decorated with an image of George Washington.

U.S. Patent No. D21688 protects a badge featuring George Washington:

U.S. Patent No. D21835 on a spoon featuring George Washington:

Happy 292nd Birthday, George, and thanks for the days off!

Presidents Day 2024

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Presidents have had a lot to do with patents over the years. Presidents used to sign the patents, and George Washington signed the first patent issued by the U.S. Government on July 31, 1790:

Of course every patent nerd knows that Abraham Lincoln on May 22, 1849, Abraham Lincoln received Patent No. 6469 for a device to lift boats over shoals. He is the only president to have received a patent.

However, a number of presidents have been the subject of patents:

U.S Patent No. D41046, issued July 17, 1917, honors presidents Washington, Lincoln, and Wilson:

President Washington got another shout out a few years early, in U.S. Patent No. 537,666, which issued on April 16, 1895, on a toy bank featuring the future President and a cherry tree:

The presidents from Washington to Grant were featured in U.S. Patent No. D9138, which issued March 14, 1875, on a fan:

The presidents from Washington to Grant also shared the spotlight in U.S. Patent No. D8000 issued January 12, 1875:

On August 3, 1915, U.S. Patent No. 1148885 made the Presidents part of a patented puzzle:

The first 31 presidents made were celebrated in U.S. Patent No. 2,284,256 on a Card Game, issued May 26, 1942:

There are of course many other patents that mention one or more presidents, but those are for a future Presidents Day post.

Claim Construction Mistakes Require Vacation of Non-infringement Decision

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In Promptu Systems Corp. v. Comcast Corp., [2022-1939] (February 16, 2024), the Federal Circuit vacated judgment of non-infringement of U.S. Patent Nos. 7,047,196, 7,260,538, NS RE44,326, and remanded for further proceedings

U.S. Patent Nos. 7,047,196

The ‘196 patent provides speech recognition services to a collection of users over a network that supports cable television and/or video delivery.

U.S. Patent No. 7,260,538

The ’538 patent describes and claims related subject matter, but the ’538 patent’s specification is materially different from the ’196 patent’s specification. At a general level, the primary distinction between the ’196 patent and the ’538 patent is that the former relates to using remote voice-recognition systems to deliver requested (cable or video) content in response to a user’s speech request, while the latter relates to using remote voice-recognition systems to control a user’s television set based on a user’s speech command.

On appeal, Promptu challenged the district court’s construction of four claim limitations: “back channel,” “multiplicity of received identified speech channels,” “speech recognition system coupled to a wireline node” (each from the ’196 patent), and “centralized processing station” (from the ’538 patent).

The Federal Circuit agreed that the district court erred by narrowly construing “back channel” in the ’196 patent as limited to “[a] fixed band of frequencies or time slot(s) for transmitting signals to a speech processing system or engine.” The Federal Circuit said that nothing in the claim language suggests the limitation to a fixed band of frequencies or time slots. “Back” undisputedly refers to the direction (upstream) opposite the direction of transmission of the programming (downstream). And whether “channel” means a path or what is flowing in the path (an issue discussed infra), the Court saw nothing in the meaning of the quite general term “channel” that limits the path to one defined by a fixed band of frequencies or time slots. The Federal Circuit also found that nothing in the ’196 patent’s specification require the particular path-definition technique demanded by the district court’s claim construction. Moreover, the ’196 patent, through an incorporated application, describes schemes that involve signal transmission along the back channel on dynamically assigned
and managed (i.e., not fixed) frequency bands or time slots.

The Federal Circuit found that the use of a fixed frequency band or time slots, in this patent,
is no more than exemplary, not required. The specification did not limit the channel-defining techniques to a fixed frequency band or time slots. Case law has long recognized that particular features recited in the specification merely as aspects of embodiments,
and not expressly or even implicitly identifying requirements of the invention, do not narrow a claim term that is otherwise broader in its ordinary meaning.

The Federal Circuit similarly rejected the district court’s construction of the “multiplicity of received identified speech channels” phrase in the ’196 patent as requiring “a single band of frequencies or a designated time slot” for each identified speech channel. The construction depends on the underlying construction of “channel,” which the Federal Circuit rejected.

The district court construed the “speech recognition system coupled to a wireline node” phrase in the ’196 patent, in sum, as “a system whose function is speech recognition”
“connected in or near” “a network node providing video or cable television delivery to multiple users using a wireline physical transport between those users at the node.” The Federal Circuit said that construction incorrectly construes the constituent terms “speech recognition system,” “coupled to,” and “wireline node” within the claim phrase.

The Federal Circuit said that the district court’s construction of “speech recognition system” as “a system whose function is speech recognition” improperly presupposes that speech recognition is the exclusive function of the speech recognition system. Claim Construction Order, at 2 (emphasis added). The claim term, “speech recognition system,” does not entail such exclusivity. Further, the ’196 patent’s specification describes functions that a “[s]peech processor computer” may perform other than speech recognition, such as billing and system management.

The Federal Circuit said that the district court’s construction of “coupled to” as “connected
in or near” incorrectly reads a proximity requirement (“in or near”) into the claim term at issue. The Federal Circuit has repeatedly held variants of “coupled to” in patent claims to mean simply “connected to.”

The Federal Circuit said that the district court improperly adopted the specification’s
definition of “centralized wireline node” when construing the claim term “wireline node.” The Federal Circuit reasoned that the “centralized” modifier (used in the composite term defined in the specification) must add some meaning to or limitation on the “wireline node” being modified. The absence of the “centralized” modifier in the claims, in turn, means that
the claimed “wireline node” must be broader in some way than the “centralized wireline node” defined in the specification.

The Federal Circuit also found fault with the district court’s claim construction of “centralized processing station” in the ’538 patent as a “device at a cable-TV network head-end unit that receives and performs voice recognition on voice commands, and generates and returns instructions to settop boxes to carry out the commands.” The Federal Circuit noted that the location requirement: that a “centralized processing station” must be located “at a cable-TV network head-end unit.” The “centralized processing station” that is itself “configured to” perform the required voice-recognition actions (i.e., to receive and process output by applying voice recognition, to identify voice commands, and to derive instructions), the claims fairly specify that the “centralized processing station” performs the claimed voice recognition, rather than merely applies the results of such voice recognition performed
elsewhere. The Federal Circuit said that the district court incorrectly required the recited “device” to be located “at a cable-TV head-end unit,” based upon an example in the specification.

The Federal Circuit vacated the district court’s entry of final judgment as it relates to Promptu’s ’196 and ’538 patent-infringement claims. The Fedeal Circuit reversed in part and affirmed in part the district court’s claim constructions, and remanded to the district
court for further proceedings.

VALEN-TECH II (More IP to Ensure your Happy Valentine’s Day)

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U.S. Patent No. 1,353,709 discloses a token “which may be presented as an expression of friendship or admiration.”

•U.S. Patent No. 2,726,397discloses an apron with interchangeable appliques, explaining “often such persons as housewives and hostesses desire to decorate articles of clothing, curtains, coverings and so forth with figures and designs of various shape and color.” Reportedly this was even more popular than the Valentine-themed vacuum cleaner.

U.S. Patent No. 3,016,178 discloses a box construction, such as Valentines Day boxes, which are intended to contain candy or other comestibles or flowers. This is one of many patents on heart-shaped boxes.

U.S. Patent No. 6,172,328 discloses methods for etching, cutting and/or altering, the surface of a flower, plant, cut foliage, allowing one to inscribe a Valentine’s Day greeting on the flowers themselves.

U.S. Patent No. 6,053,399 “relates to mailers and envelopes and, more particularly, to envelops and mailers for sending small sachets and photographs.”

U.S. Patent No. 5,160,087 discloses a drinking straw, designed to demonstrate the need for teamwork.

U.S. Patent No. 4993184 discloses a “heart-shaped, free standing, living plant comprises at least two living plants, a left plant and a right plant, formed into opposed lobes forming the heart configuration.”

Last, but not least, U.S. Patent No. 5727565, discloses a heart shaped “kissing shield comprised of a thin, flexible membrane and a frame or holder” to ensure that your Valentine’s Day is both safe and happy!

Inventorship Guidance for AI-Assisted Inventions

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On February 13, 2024, the USPTO published guidance for AI-assisted inventions in the Federal Register, outlining two basic points: First, inventors and joint inventors named on U.S. patents and patent applications must be natural person, and Second, AI-assisted inventions are not categorically unpatentable for improper inventorship. The guidance also reiterated the Pannu factors for identifying inventors of AI-assisted inventions. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)

The USPTO previously determined that inventorship is limited to natural persons, and this was affirmed in Thaler by the Eastern District of Virginia (Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021)) and the Court of Appeals for the Federal Circuit (Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023)). Thus, AI cannot be named as an inventor or co-inventor. The Guidance recognizes that while an AI system may not be named an inventor or joint inventor in a patent or patent application, an AI system— like other tools—may perform acts that, if performed by a human, could constitute inventorship under our laws, but the patent statute limits inventorship to natural persons.

While AI systems and other nonnatural persons cannot be listed as inventors on patent applications or patents, the use of an AI system by a natural person does not preclude a
that natural person from qualifying as an inventor (or joint inventors) if that natural person significantly contributed to the claimed invention. The Federal Circuit has made clear that conception is the touchstone of inventorship. Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir.
1994). Conception is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

There is no requirement for a named inventor to contribute to every claim in an application or patent; a contribution to a single claim is sufficient. However, each claim must have been
invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent application or patent. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application.

The Guidelines identify these factors for when a natural person is an inventor of an AI-assisted invention:

  1. Use of an AI system in creating an AI-assisted invention does not negate the person’s use of contributions as an inventor.
  2. A significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.
  3. A person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor.
  4. A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention.
  5. A natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, if that is a significant contribution to the invention created with the AI system.

The Guidelines identify these factors for when a natural person is not inventor of an AI-assisted invention:

  1. Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception.
  2. A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system.
  3. A natural person who merely recognizes and appreciates the output of an AI system as an invention, is not necessarily an inventor.
  4. A person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.

Mardi Gras 2024

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More examples of how the patent system improves everything — including Mardi Gras. U.S. Patent No. D645226 protects an Edible Cookie Mask, and get that last snack in before Lent begins:

U.S. Patent No. D629177 also provides a Mardi Gras mask, but without the snack:

U.S. Patent No. PP21407 provides an Aeonium Plant named “Mardi Gras” (and a cool word with all of the vowels):

U.S. Patent No. D611117 provides a Mardi Gras Doubloon Fishing Lure, to get a jump on meatless Fridays:

U.S. Patent No. PP15203 provides an Abelia Plant named “Mardi Gras”:

U.S. Patent No. D375658 provides a serving basket in the form of a Mardi Gras parade float:

U.S. Patent No. 8672169 provides a decorated cup for your Mardi Gras libations:

Broad Ranges in the Written Descriptiion Supported Narrower Ranges in the Claims

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In Rai Strategic Holdings, Inc. v. Philip Morris Products, SA, [2022-1862] (February 9, 2024), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the PTAB’s final written decision holding claims of U.S. Patent No. 10,492,542 unpatentable as obvious or lacking written description. Te ’542 patent, which is directed to electrically powered smoking articles that provide an inhalable substance in vapor or aerosol form by heating tobacco or other substances without significant combustion.

Philip Morris argued that dependent claims 10 and 27, which recite a heating member with
“a length of about 75% to about 85% of a length of the disposable aerosol forming substance,” are not supported by written description because “the claimed range is different
from and substantially narrower than the ranges disclosed in the specification.” Specifically, Philip Morris asserted that while the specification describes ranges such as 75% to 125%, 80% to 120%, 85% to 115%, and 90% to 110%, it does not disclose a heater length range
with an upper limit of 85%. RAI countered that the specification provides written description support because it teaches heating length embodiments at both ends of the claim range, pointing to the 75% to 125% and 85% to the 110% ranges. The Board found that the claims lack written description support because no range contains an upper limit of about 85% making it “‘less clear’ that the inventors contemplated a range of ‘about 75% to about 85%’ as part of the invention.”

The Federal Circuit began with a review of In re Wertheim, where its predecessor found that a disclosure of a range of 25% to 60% and provided support for claims to a range “between 35% and 60%. In Wertheim the Court said that whether the written description requirement is met, “[m]ere comparison of ranges is not enough,” and that instead, “we must decide whether the invention appellants seek to protect by their claims is part of the invention that
appellants have described as theirs in the specification.” “Where it is clear, for instance, that the broad described range pertains to a different invention than the narrower (and subsumed) claimed range, then the broader range does not describe the narrower range” and the written description requirement would not be satisfied.

The Federal Circuit also noted In re Blaser, 556 F.2d 534, 536–37 (C.C.P.A. 1977), where it held the specification, which disclosed heating a mixture to temperatures between 60º and 200º C, “adequately support[ ed] the limitation ‘80º to 200º C” and Kolmes v. World Fibers Corp.,107 F.3d 1534 (Fed. Cir. 1997), where it found that the specification stating a range of wrappings formed “at the rate of 4–12 turns per inch, with 8 turns per inch being preferred” supported a claim to a “rate of 8-12 turns per inch.”

However, in In re Baird, 348 F.2d 974 (C.C.P.A. 1965), cited by the Board, the CCPA held that a claimed range that was narrower than the disclosed range lacked sufficient disclosure. The issued patent explained the specific claimed range is preferred because the material would curl above 60º F and would be too brittle below 40º F. The application in interference, however, only disclosed that the quenching temperature may be between 32º F and 176º F, without providing any further guidance. The court found that the application’s claims lacked written description support because “the copied claims ‘are drawn to an invention different from that disclosed in the specification.”

Similarly, Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., 18 F.4th 1323 (Fed. Cir. 2021), also cited by the Board, held that a claimed range “about 40 wt % to about 60 wt %” lacked written description support because (1) neither the range nor the end values were disclosed in the specification; and (2) the inconsistent statements regarding the desired amount of polymer in the specification made it “even less clear that an invention of ‘about 40 wt % to about 60 wt %’ was contemplated as an aspect of the invention.”

Turning to the case before it, the Federal Circuit said the question thus is whether the disclosure of a length of about 75% to about 125%, about 80% to about 120%, about 85% to about 115%, or about 90% to about 110% “reasonably conveys to those skilled in the art that
the inventor had possession” of the claimed length of “about 75% to about 85%.” The Court said among other things, we consider whether “the broad described range pertains to a different invention than the narrower (and subsumed) claimed range,” in which case the specification does not provide written description support for the narrower claimed range.

.

The specification need not expressly recite the claimed range to provide written description support. While the ’542 patent specification does not disclose the claimed range itself, it
does expressly disclose both endpoints by providing that the length of the heating member may be “about 75% to about 125%” or “about 85% to about 115%.” In addition to considering what the specification expressly discloses, we also consider the context of the technology at issue and the knowledge gained by a person of ordinary skill in the art
reading the specification. Given the predictability of electro-mechanical inventions such as the one at issue here, and the lack of complexity of the particular claim limitation at issue—i.e., reciting the length of a heating member—“a lower level of detail is required to satisfy the written description requirement than for unpredictable arts.” Further, nothing in the changes the invention, whether as to operability, effectiveness, or any other parameter.

Thus, the Federal Circuit we see no evidence suggesting that the broad described
ranges disclose a different invention than the claimed range of “about 75% to about 85%.” In other words, under the facts of this particular case, there is no evidence that the claimed
subrange results in a different invention than the invention disclosed in the specification. Accordingly, for all of the above reasons, we conclude that no reasonable fact finder could find that the claimed subrange is not within the appellant’s invention. In so holding, we note that our determination is highly factual and dependent on “the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure.”

Though the Board relied on Indivior and Baird in its decision, the facts in this case align more closely with those in Wertheim, Blaser, and Kolmes, where the broader disclosed
ranges did not constitute a separate invention from the narrower claimed ranges. The Federal Circuit vacated the Board’s decision on this issue and remand for further consideration consistent with this opinion.

The Federal Circuit concluded that substantial evidence supports the Board’s determination of obviousness.