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
* In a post on January 17, 2018, John M. Roqitz discussed the Federal Circuit finding a virus-screening method not abstract and patent eligible in Finjan, Inc. v. Blue Coat Systems, Inc., 2016-2520 (Fed. Cir., Jan. 10, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2520.Opinion.1-8-2018.1.PDF). The court seems to have dug through the specification to determine that the claim does more than simply look for the presence of known viruses. (http://www.ipwatchdog.com/2018/01/17/virus-screening-patent-eligible/id=92446/).
* On January 19, 2018, Joseph Robinson and Robert Schaffer further commented on Finjan, Inc. v. Blue Coat Systems, Inc., 2016-2520 (Fed. Cir., Jan. 10, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2520.Opinion.1-8-2018.1.PDF). They consider the opinion as stating that when a claim recites specific steps to accomplish a desired result, the claim is not directed to abstract results. (http://www.ipwatchdog.com/2018/01/19/abstract-results-steps-desired-result/id=92558/).
* In a January 28, 2018 post, Steve Brachmann discussed Exmark Manufacturing Company, Inc. v. Briggs & Stratton Power Products Goup, LLC, 2016-2197, slip opinion (Fed. Cir., Jan. 12, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2197.Opinion.1-10-2018.1.PDF). The court overturned findings of no invalidity regarding a patent that had survived several reexamination proceedings at the USPTO. The court’s opinion included the statement, “a court is never bound by an examiner’s finding in an ex parte patent application proceeding.” (http://www.ipwatchdog.com/2018/01/28/pto-reexaminations-should-not-preclude-validity-challenges/id=92783/).
* On January 24, 2018, Steve Brachmann provided details on Advanced Video Technologies LLC. v. HTC Corporation, et al. 2016-2309, 2016-2310, 2016-2311 (Fed. Cir., Jan. 11, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2309.Opinion.1-9-2018.1.PDF). A company lacked standing to sue for patent infringement due to a missing signature on one of three co-inventors’ declarations filed with the USPTO. This was despite the USPTO registering reassignments of the patent. You should consider auditing patent file histories. (http://www.ipwatchdog.com/2018/01/24/lack-signature-assignment-declaration-nixes-standing/id=92386/).
* On February 2, 2018, Joseph Robinson and Robert Schaffer commented on the issue of claiming abstract ideas, in reference to the opinion, Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 2016-2684, 2017-1922, 2018 U.S. App. LEXIS 1932 (Fed. Cir., Jan. 25, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2684.Opinion.1-23-2018.1.PDF). They consider the opinion as finding that summarizing information is not abstract when improving the efficiency of an electronic device. (http://www.ipwatchdog.com/2018/02/02/claims-summarizing-information-not-abstract/id=93240/).
* In their February 4, 2018 post, Joseph Robinson and Robert Schaffer reported on In re Janssen Biotech, Inc., No. 2017-1257, 2018 U.S. App. LEXIS 1640 (Fed. Cir., Jan. 23, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1257.Opinion.1-19-2018.1.PDF) wherein a patentee attempted to retroactively designate a patent application as a divisional application after it issued to take advantage of the safe harbor protection against obviousness-type double patenting. The patentee’s attempt was not successful. (http://www.ipwatchdog.com/2018/02/04/patent-cannot-retroactively-filed-divisional-application-avoid-obviousness-type-double-patenting/id=93275/).
* In another February 4, 2018 post, Joseph Robinson and Robert Schaffer reported on Arthrex, Inc. v. Smith & Nephew, Inc., No. 2017-1239, 2018 U.S. App. LEXIS 1737 (Fed. Cir., Jan. 24, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1239.Opinion.1-23-2018.1.PDF) wherein a patentee tried to thwart an inter partes review by disclaiming the challenged claims. The PTAB (Patent Trial and Appeal Board) issued a decision, affirmed by the Federal Circuit, including an adverse judgment that estopped the patentee from asserting similar claims in continuation applications. “Backfired” may be the proper term to apply to patentee’s efforts before the PTAB. (http://www.ipwatchdog.com/2018/02/04/disclaimer-institution-ipr-results-adverse-judgment-estoppel/id=93272/).
Patently-O – a blog written by Dennis Crouch – www.patentlyo.com.
* In a January 25, 2018 post, Professor Crouch discussed Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 2016-2684, 2017-1922, 2018 U.S. App. LEXIS 1932 (Fed. Cir., Jan. 25, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2684.Opinion.1-23-2018.1.PDF), which held that a graphical user interface menu structure was patent eligible. (https://patentlyo.com/patent/2018/01/structure-patent-eligible.html).
* In his February 9, 2018 post, Professor Crouch relates the Federal Circuit’s pronouncement that “injected molded” provides a structural limitation for a patent claim, even when the specific structure is not defined. The case is In re Nordt Development Co., LLC, 2017-1445, slip opinion (Fed. Cir., Feb. 8, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1445.Opinion.2-6-2018.1.PDF)
Patent Docs – A patent blog – patentdocs.typepad.com/patent_docs
* In the February 7, 2018 post, Joseph Herndon discussed the curious situation wherein the U.S. lost a motion to dismiss a patent infringement claim based on the claims being ineligible under 35 U.S.C. § 101. This was a situation wherein the U.S. government issued a patent, then alleged that the patent claims were not eligible. The government lost on this issue. The court’s order in Science Applications International Corp. v. U.S., No. 17-825 (Fed. Cl., Jan. 18, 2018) is available at http://patentdocs.typepad.com/files/order-17.pdf. (http://www.patentdocs.org/2018/02/science-application-international-corp-v-united-states-fed-cl-2018.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.
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