Patently Easter

One of the earliest references to Easter in the patent collection is U.S. Patent No. 1,234,939 on a Carrier for Eggs, which issued July 31, 1917. (The earliest reference was just a few months in April 1917, on a perpetual calendar.

U.S. Patent No. 1,269,169 issued nearly a year later on a Carton “adapted to contain candy Easter eggs.”

On July 13, 2020, U.S. Patent No. 1,356,658 issued on an Advertising Specialty with an Easter theme:

U.S. Patent No. 1,484,796 issued February 26, 1924, on an Egg Laying Toy:

U.S. Patent No. D64293 issued March 18, 1924, on a Candy Easter Egg:

U.S. Patent No. D64292 issued the same day on another Candy Easter Egg:

U.S. Patent No. D64291 issued on another Candy Easter Egg:

U.S. Patent No. D64,290 issued on another Candy Easter Egg:

And U.S. Patent No. D64289 issued on a Candy Easter Egg:

Finally (for this post) U.S. Patent No. 1,516,718 issued on a Novelty Toy in “the shape of an Easter egg” and we are only up to 1924.

Merely Because a Technology is Known, Does Not Mean There Was a Motivation to Use It

In Virtek Vision International ULC v. Assembly Guidance Systems, Inc., [2022-1998, 2022-2022] (March 27, 2024), the Federal Circuit reversed the PTAB determination that certain claims of U.S. Patent No. 10,052,734 were unpatentable, and affirmed the determination that other claims of the ‘734 patent had not been shown to be unpatentable.

The ’734 patent discloses an improved method for aligning a laser projector with respect to
a work surface. On appeal, Virtek argued the Board’s findings that a skilled artisan would have been motivated to combine the references were not supported by substantial evidence, and the Federal Circuit agreed.

The Federal Circuit said that it does not suffice to meet the motivation to combine requirement to recognize that two alternative arrangements (such as an angular direction system using a single camera and a 3D coordinate system using two cameras) were both known in the art.

These disclosures, however, do not provide any reason why a skilled artisan would use 3D coordinates instead of angular directions in a system. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only
could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).

The Federal Circuit said that the mere fact that possible arrangements existed
in the prior art does not provide a reason that a skilled artisan would have substituted the one-camera angular direction system in one prior art system with the two-camera 3D coordinate system disclosed in another. The Court noted that there was no argument in the petition regarding why a skilled artisan would make this substitution—other than that the two different coordinate systems were “known to be used.” The petition did not argue that the references articulates any reason to substitute one for another or any advantages that would flow from doing so, and neither did Petitioner’s expert articulate any reason why a skilled artisan would combine these references.

The Federal Circuit said that KSR did not do away with the requirement that there must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention. The Federal Circuit said that there was no argument about common sense in the petition or in the expert’s declaration. There was no evidence that there are a finite number of identified, predictable solutions. There was no evidence of a design need or market pressure. In short, this case involved nothing other than an assertion that because two coordinate systems were disclosed in a prior art reference and were therefore “known,” that satisfies the motivation to combine analysis. That is an error as a matter of law. It does not suffice to simply be known. A reason for combining must exist.

Failure to Give Jury Instruction on Objective Indicia After Evidence Was Presented Was Error Requiring a New Trial

In Inline Plastics Corp. v. Lacerta Group, LLC, [2022-1954, 2022-2295] (Fed. Cir. 2024), the Federal Circuit affirmed the judgment of non-infringement, but vacated the jury determination of invalidity because of an error in jury instructions on the objective indicia of nonobviousness.

The case involved U.S. Patent Nos. 7,118,003; 7,073,680; 9,630,756; 8,795,580; and 9,527,640, which describe and claim tamper resistant and tamper evident containers,

On the invalidity issue, the Federal Circuit rejected the argument that the references were “cumulative” of PTO-considered references, pointing out that Inline cites no authority that
precludes a successful obviousness challenge that rests on PTO-considered references.

The Federal Circuit also rejected the argument that there was no legally sufficient evidence of the motivation to combine references. The Federal Circuit said that it has consistently stated that a court or examiner may find a motivation to combine prior art references
in the nature of the problem to be solved” and that “[t]his form of motivation to combine evidence is particularly relevant with simpler mechanical technologies. Further, the Federal Circuit it has recognized that some cases involve technologies and prior art that are simple enough that no expert testimony is needed” regarding a motivation to combine.

Finally, the Federal Circuit rejected Inline’s argument that Lacerta’s challenge must fail because it did not rebut or even address Inline’s objective- indicia evidence. The Court said that is has never held that the challenger must present its own testimony on objective indicia or else the patentee’s evidence must be credited, much less must be credited as dispositive of the obviousness issue.

As to the jury instruction on objective-indicia, the Federal Circuit agreed that the instruction was legal error. The Federal Circuit noted that Inline presented evidence of industry praise for its products, as well as evidence for additional objective indicia, such as copying and licensing. The Court said that this evidence, taken together, called for an instruction, if properly requested, on the objective indicia to which the evidence pertains, so that the jury
could assess its weight as objective indicia and—where the jury was asked for the bottom-line answer on obviousness— in relation to the prima facie case. However, the district court
did not give such an instruction.

The error in the objective-indicia instruction here was not harmless (whether under Federal Circuit or First Circuit law). We cannot say that a proper instruction would have made no difference to a reasonable jury regarding invalidity.

Damages for Some Foreign Uses are Available, Provided you Prove Your Case

In BrumField v. IBG LLC, [2022-1630] (Fed. Cir. 2024), the Federal Circuit affirmed the district court judgment that U.S. Patent Nos. 6,766,304 and 6,772,132 were valid and infringed, and U.S. Patent Nos. 7,676,411 and 7,813,996 were invalid under 35 U.S.C. § 101. The patents describe assertedly improved graphical user interfaces for commodity trading and methods for placing trade orders using those interfaces.

The Federal Circuit agreed that the asserted claims of the ’411 and ’996 patents claim ineligible subject matter. The Court said that are directed to abstract ideas, and they add nothing (no inventive concept) that transforms them into claims to eligible subject matter. The asserted claims are directed to abstract ideas, and they add nothing (no inventive concept) that transforms them into claims to eligible subject matters.

The claims focus on the receipt and display of certain market information (bids and offers) in a manner that newly helps users see the information for use in making trades. But the combination of receipt and display of information, even of a particular type, and use of the information to engage in the funda-mental economic practice of placing an order, are abstract ideas.Further, nothing in the claims, understood in light of the speci-fication, calls for anything but preexisting computers and displays, programmed using techniques known to skilled artisans, to present the new arrangement of information.

With respect to the damage award, TT argued that the district court should have applied the extraterritoriality analysis articulated by the Supreme Court in WesternGeco, rather than more restrictive principles the district court drew from Power Integrations. The district court was reluctant to conclude, on its own, that WesternGeco displaces Power Integrations as the required framework of analysis for this case, involving 35 U.S.C. § 271(a) and a reasonable royalty. the Federal Circuit agreed with TT, but concluded that, even under the WesternGeco framework, the evidence offered by TT’s expert was properly excluded.

§ 271(e)(1) Pprovides a Wide Berth for the Use of Patented Inventions in Activities Related to the Federal Regulatory Process

In Edwards Lifesciences Corporation v. Meril Life Sciences Pvt. Ltd., [2022-1877] (Fed. Cir. 2024), the Federal Circuit affirmed the district court’s summary judgment that Meril’s act of importation of the two transcatheter heart valve systems fell within the safe harbor provision of 35 U.S.C. § 271(e)(1).

The Federal Circuit concluded that the undisputed evidence showed Meril’s importation of the two transcatheter heart valve systems was reasonably related to submitting information to the United States Food and Drug Administration, and affirmed the district court’s
summary judgment of noninfringement.

Section 271(e)(1) sets forth:

It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs . . . .

This safe harbor “provides a wide berth for the use of patented [inventions] in activities related to the federal regulatory process.” Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193, 202 (2005). As the Supreme Court in Merck explained, “it [is] apparent from the statutory text that § 271(e)(1)’s exemption from infringement extends to all uses of patented
inventions that are reasonably related to the development and submission of any information under the Food, Drug, and Cosmetic Act].” Moreover, the § 271(e)(1) exemption is not limited temporally. Mooring in the safe harbor is available to defendants irrespective of
the stage of research and even if the information is never ultimately submitted to the FDA.

St. Patrick’s Day 2024

No holiday escapes the beneficial attention of inventors many of whom have sought to improve our St Patrick’s day.

U.S. Patent No. 962872 on perfume tablets designed to be dissolved in water and to give forth a perfume upon dissolution, and includes an embodiment with a shamrock design “peculiarly appropriate to dinners given on St. Patrick’s Day.”

U.S. Patent No. 5,184,482 dislcloses an ear ornament with an embodiment having a shamrock, perfect for St. Patrick’s Day:

U.S. Patent No. 5,255,825 discloses a device to “dispense green dye into individual glasses or pitchers on Saint Patrick’s Day”:

U.S. Patent No. 5,487,924 discloses napkin rings, with an embodiment perfect for St. Patrick’s Day:

U.S. Patent No. 5,491,617 discloses an Illuminated Fluid Tap, and suggests that the tap be illuminated “green for St. Patrick’s Day celebrations.”

U.S. Patent No. 5,543,321 disclosed colored plant culture media, and suggest that the media “sold at St. Patrick’s Day can contain culture medium dyed green.”

U.S. Patent No. 9,863,641, disclosed a heating appliance with light and sound that can be illuminated green for St. Patrick’s Day:

U.S. Patent No. D828774 discloses a Necklace perfect for St. Patrick’s Day:

U.S. Patent No. D828,776 discloses another embodiment of necklace perfect for St. Patrick’s Day:

Oscar Night

March 10, 2024, is Oscar night, and it is difficult to think of an event that is more steeped in Intellectual Property. The Oscar statue was copyrighted (Reg. No. G38512):

and renewed (Reg. No. R443432):


The Oscar statute is also registered as a trademark (Reg.Nos. 1028635 and 1960182):

Patents, however, are connected to the Oscars in a peculiar way: a number of Oscar nominees and winners appear in patent drawings. For example, 1993 Best Supporting Actress Marisa Tomei appears in Fig. 2B of U.S. Patent No. 8,208,764:

Elizabeth Taylor, who won the Oscar for Best Actress in 1961 and 1967, is in Fig. 2C of U.S. Patent No. 8,208,764:

2018 Best Actor Nominee Timothee Chalamet and 2009 Best Supporting Actor Nominee Josh Brolin appear in Fig. 1 of U.S. Application US 20220277458:

The director of the 1980 Academy Awards Best Foreign Language Film The Tin Drum, Volker Schlöndorff, is shown in Fig. 7 of US 20220277458:

1969 Academy Award Best Supporting Actor Nominee Elliott Gould and 1984 Academy Award Best Actress Shirely McClaine are shown in Fig. 8 of US 20220277458:

Inartful Does Not Mean Indefinite

In Maxell, Ltd. v. Amperex Technology Limited, [2023-1194] (Fed. Cir. 2024), the Federal Circuit reversed the finding of indefiniteness of the claims of U.S. Patent No. 9,077,035 were not indefinite.

The ’035 patent, titled “Nonaqueous Secondary Battery and Method of Using the Same,” describes and claims a lithium-ion battery with a positive electrode, a negative electrode, and a nonaqueous electrolyte. Claim 1 contained the limitation “wherein M1 represents at least one transition metal element selected from Co, Ni and Mn,” and further “wherein the content of Co in the transition metal M1 of the formulae (1) and (2) is from 30% by mole to 100% by mole,”

The district court found the claims invalid for indefiniteness, noting t reasoned that “the
plain language of the claim recites a contradiction, ”because the first limitation does not require the presence of cobalt (nickel or manganese suffices), so cobalt is “optional,”
whereas the second limitation does require cobalt.”

The Federal Circuit concluded that the district court’s rationale, was incorrect, but
not because a contradiction in a claim cannot produce indefiniteness. Rather, there is no contradiction in the claim language at issue in this case. The Federal Circuit explained:

The first of the two limitations at issue regarding M1– limitation [c]—states one requirement a transition metal element must meet to come within the claim: It must contain cobalt, nickel, or manganese. The second limitation at issue—limitation [f]—states a second requirement: The transition metal element must contain cobalt at a content of 30% to 100% by mole. It is perfectly possible for a transition metal element to meet both requirements. The two
limitations are therefore not contradictory. It makes no difference, at least here, that the two requirements are placed in separate limitations—rather than both appearing in limitation [c]. Such placement does not alter the logical point that it is possible to meet both requirements, meaning that there is no contradiction.

The Federal Circuit said that placement of the two requirements does not create an otherwise-nonexistent contradiction. That is so even if there was a more artful way of stating the two requirements within the same claim. And the record provides a readily discernible explanation for the placement: The second requirement for the M1 term was added during
prosecution to overcome a prior art reference that primarily used nickel as a transition metal. That there were other ways of drafting the claim does not render the claim language contradictory or indefinite.

Optimization Analysis Generally Requires Consideration of Whether a Person of Ordinary Skill in the Art Would have been Motivated, with a Reasonable Expectation of Success

In Sanofi Pasteur Inc. v. Sanofi Pasteur Inc., [2019-1871, 2019-1873, 2019-1875, 2019-1876, 2019-2224] (Fed. Cir. 2024), the Federal Circuit affirmed the Board’s conclusions
that claims 1–45 of U.S. Patent 9,492,559 are unpatentable, and the Board’s denial of Pfizer’s motions add certain claims, and vacated the denial as to certain other claims.

The ‘559 patent is directed to immunogenic compositions comprising conjugated Streptococcus pneumoniae capsular saccharide antigens (i.e., glycoconjugates)
for use in pneumococcal vaccines. Across five IPR’s the validity of all the claims was challenged.

Pfizer first contends that the Board erred in applying the “result-effective variable doctrine,” arguing that it is only appropriate in circumstances where there is actual overlap between a range in the prior art and a claimed range. Since the asserted prior art did not disclose a particular molecular weight range, there could be no presumption of obviousness, and it was
error for the Board to consider whether that variable was result-effective.

The Federal Circuit disagreed, saying that the determination whether or not a claimed parameter is a result-effective variable is merely one aspect of a broader routine optimization analysis. That analysis is rooted in the decades-old legal principle that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”

The Federal Circuit said that a routine optimization analysis generally requires consideration whether a person of ordinary skill in the art would have been motivated, with a reasonable expectation of success, to bridge any gaps in the prior art to arrive at a claimed invention. Where that gap includes a parameter not necessarily disclosed in the prior art, it is not improper to consider whether or not it would have been recognized as result-effective. If so, then the optimization of that parameter is “normally obvious.” The Federal Circuit found substantial evidence supported the Board’s conclusion that the varlaibe (molecular weight) would have been obvious over the references.

The Federal Circuit rejected the suggestion that unpredictability of the art affected its analysis, nothing that it has previously explained that “a rule of law equating unpredictability to patentability . . . . cannot be the proper standard since the expectation of success need
only be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007)(“[O] bviousness cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success”).

Federal Circuit Agrees that “The Invention” is the invention

In Chewy, Inc. v. International Business Machines Corp., [2022-1756] (Fed. Cir. 2024), the Federal Circuit affirmed in part. reversed in part, and remanded the distirct court’s summary judgment of non-infringement of claims of U.S. Patent No. 7,072,849, and summary judgment that claims of U.S. Patent No. 7,076,443 were directed to ineligible subject matter.

Non-Infringement of U.S. Patent No. 7,072,849

Claim 1 of the ‘849 patent stated:

Infringement of the claims ‘849 patent turned on whether the claims to improvements in web-based advertising required “prefetching” an advertising object, even though these words are not set forth in the claim. The “Summary of Invention” said:

‘849 patent, 3:6-21. The “Description of the Preferred Embodiment: said:

‘849 patent, 33:16-27.


‘849 patent, 34:38-44. The Federal Circuit concluded that in light of these “repeated descriptions of the present invention, a skilled artisan would understand the claimed invention requires pre-fetching of advertising objects,” citing Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“When a patent . . . describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.”).

IBM tried to rely on Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121,
1136–37 (Fed. Cir. 2011), where the Federal Circuit explained that the use of the phrase “present invention” or “this invention” is not always limiting, such as where the references to a certain limitation as being the “invention’ were re not uniform, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent. However, the Federal Circuit said that these “narrow exceptions” referenced in Absolute Software were not applicable, because the ’849 patent uniformly referred to the pre-fetching of advertising objects as an aspect of the invention as a whole.

U.S. Patent No. 7,076,443 is Directed to Ineligible Subject Matter

The district court held at Alice step one the asserted claims were directed to the abstract idea of identifying advertisements based on search results. The Federal Circuit agreed, noting that it has held claims to targeted advertising were directed to an abstract idea at Alice step one. IBM argued its claims recited a specific solution to unique technical problems arising from advertising over a computer network. The Federal Circuit rejected this argument, noting that the claims were not directed to any challenges unique to computer networks, or specific improvements to the functionality of the computer itself. The claims merely recite the concept of identifying advertisements based on search results, without any specificity as to how this is accomplished. The Federal Circuit said that even accepting that the claimed invention improves the specificity and relevancy of online advertisements, this “is at most an improvement to the abstract concept of targeted advertising wherein a computer is merely used as a tool.”