This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues.
IPWatchdog – a patents and patent law blog – IPwatchdog.com
* On July 20, 2018, Steve Bachmann explained Federal Circuit decision in Blackbird Tech.., LLC v. ELB Electronics, Inc., No. 2017-1703 (Fed. Cir., July 16, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1703.Opinion.7-16-2018.pdf) that vacated the lower court’s claim construction as improperly importing a limitation from the specification instead of relying on the claim language. (http://www.ipwatchdog.com/2018/07/20/cafc-district-court-erred-claim-construction-blackbird-patent/id=99434/).
* On July 22, 2018, Michael Annis and Myers Dill provided insight into how a well-drafted design patent application can provide broad coverage to protect against even slight infringements by competitors. (http://www.ipwatchdog.com/2018/07/22/design-patent-owners-alleged-infringers/id=98840/).
* On July 25, 2018, Robert Schaffer and Joseph Robinson discussed TF3 Ltd. v. Tre Milano, LLC, No. 2016-2285 (Fed. Cir., July 13, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2285.Opinion.7-13-2018.pdf) wherein the Federal Circuit found that a broadest reasonable claim interpretation is limited by the scope of the specification. (http://www.ipwatchdog.com/2018/07/25/broadest-reasonable-claim-interpretation-cannot-exceed-specification/id=99534/).
* On July 31, 2018, Steve Bachmann discussed the Federal Circuit decision in Trustees of Boston University v. Everlight Electronics Co., No. 2016-2576 (Fed. Cir., July 25, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2576.Opinion.7-25-2018.pdf) that invalidated a patent claim for lack of enablement. (http://www.ipwatchdog.com/2018/07/31/cafc-invalidates-boston-university-patent-claim-enablement/id=99709/).
* On July 31, 2018, Ryan Kenny discussed the relative advantages of attempting to invalidate patent claims inter partes review versus post-grant review. (http://www.ipwatchdog.com/2018/07/31/which-invalidity-avenue-ipr-verses-post-grant-review/id=99460/).
* On August 8, 2018, Gene Quinn discussed the USPTO’s recent revival of its 2003 plan for patent practitioners to take continuing legal education classes and pay patent bar dues. (http://www.ipwatchdog.com/2018/08/08/uspto-proposes-cle-bar-dues-patent-practitioners/id=100126/).
Patently-O – a blog written by Dennis Crouch – www.patentlyo.com.
* In an August 15, 2018 post, Professor Dennis Crouch discussed another one of several opinions on subject matter eligibility. In BSG Tech v. BuySeasons, Inc., 2017-1980 (Fed. Cir., Aug. 15, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1980.Opinion.8-15-2018.pdf ), a self-referencing database was considered not patent eligible. (https://patentlyo.com/patent/2018/08/referencing-database-eligible.html)
Patent Docs – A patent blog – patentdocs.typepad.com/
* In a July 25, 2018 post, Michael Borella dug into claiming conjunctively and disjunctively, in light of the USPTO making Ex Parte Jung, Appeal No. 2016-008290, Application No. 12/542,524 (PTAB, Designated July 10, 2018) (http://patentdocs.typepad.com/files/decision-on-appeal-7.pdf), an informative decision. Ex Parte Jung stated that the claim term, “at least one of A and B” means at least one of A and at least one of B. Some erroneously believe that this means at least one of A or at least one of B. At any rate, these interpretations may be modified by statements in the specification, prosecution history, or in the claims. A simpler, straight forward option would be to use “A and B” or “A or B” as appropriate. The Federal Circuit already made this understanding clear in Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 886 (Fed. Cir. 2004) (https://scholar.google.com/scholar_case?case=8801876997298455702&q=superguide+corp+v+directv+enterprises+inc&hl=en&as_sdt=2003 ) (http://www.patentdocs.org/2018/07/uspto-makes-ex-parte-jung-an-informative-decision.html)
* On August 1, 2018, James Korenchan related a review of PTAB appeal decisions regarding claims for graphical user interfaces. (http://www.patentdocs.org/2018/08/a-look-at-recent-ptab-appeal-decisions-related-to-graphical-user-interface-claims.html)
AIPLA – the profession’s national organization – see AIPLA.org
* AIPLA will hold its 2018 Annual Meeting October 25-27, 2018 in Washington, D.C. More information on this meeting and other events is available at https://www.aipla.org/learningcenter/Pages/Upcoming-Meetings.aspx.
For more information about any of the patent topics mentioned consult Patent Application Practice. Trademark topics are discussed in Trademark Registration Practice. Both are published by West and updated twice a year. For patent prosecution or litigation questions, contact Fred Douglas at 949/293-0442 or by email at firstname.lastname@example.org.