Plain and Ordinary Meaning Tempered by Application Examples

Posted by Matthew Grady on Jun 20, 2016

Matthew Grady

In Eon Corp. v. Silver Spring Networks, the Federal Circuit reversed a finding of infringement, identified a failure to construe “portable” and “mobile,” and directed entry of a judgment of non-infringement based on a proper construction of the plain and ordinary meaning of mobile and portable.

What This Means to You

  • Interpretation of plain and ordinary meaning of claim terms is conducted in view of the specification.
  • Ambiguous examples may not support broader claim scope, especially where detailed examples provide support for a narrower interpretation of the claims.
  • Explicitly claim all your embodiments and, if possible, keep continuation applications pending to provide an opportunity to resolve ambiguity.
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Federal Circuit Reaffirms that Foreign Sales and Certain Restricted U.S. Sales Do Not Trigger Patent Exhaustion

Posted by Chris Henry on May 17, 2016

Chris Henry

In Lexmark Int’l v. Impression Prods., the Federal Circuit addressed whether recent Supreme Court jurisprudence overruled two prior Federal Circuit decisions holding that:

  1. a sale subject to a clearly communicated single-use/no-resale restriction does not trigger the doctrine of patent exhaustion, and
  2. foreign sales do not trigger exhaustion.

On both fronts, the Federal Circuit ruled that recent Supreme Court opinions did not affect its earlier holdings.

What This Means to You

  • Unless and until the Supreme Court speaks on these issues, remember:
    • Clearly communicated, otherwise lawful single-use and no-resale restrictions can circumvent the doctrine of patent exhaustion; and
    • Foreign sales do not exhaust U.S. patent rights.
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When Construing Claim Scope, Each Word Matters

Posted by Brandon Blackwell on May 9, 2016

Brandon Blackwell

In Akzo Nobel Coatings, Inc. v. Dow Chemical Company, the Federal Circuit held that the use of the word “collection” in the phrase “pressurized collection vessel” required that at least some material accumulate within the vessel before infringement occurs. 

What This Means to You

  • When drafting or amending claims, be sure to remove unnecessary words or phrases.
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When a Patent Claiming Priority to a Provisional is Effective as Prior Art

Posted by Tani Chen on May 2, 2016

Tani Chen

Although it is commonly assumed that a provisional application is useful as a prior art reference on its filing date, Dynamic Drinkware LLC v. National Graphics, Inc. shows that this is not necessarily correct.  Under certain circumstances, a provisional application may be unavailable as a prior art reference as of its filing date. 

What This Means to You

  • A patent used as prior art reference that claims priority to a provisional does not automatically gain the benefit of its provisional date. Instead, the reference patent receives its provisional date only if at least one claim of the patent is supported by the provisional application. 
  • The claims should thus be closely studied since some provisionals can be disqualified as available prior art, regardless of the teachings contained within those provisionals.
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Federal Circuit Declares Disparagement Bar of Trademark Act Unconstitutional

Posted by John Welch on Apr 25, 2016

John Welch

In In re Tam, 117 U.S.P.Q.2d 1001 (Fed. Cir. 2015), the U.S. Court of Appeals for the Federal Circuit rocked the trademark world by deeming the disparagement bar of Lanham Act Section 2(a) unconstitutional because it violates the Freedom of Speech Clause of the First Amendment.

What This Means to You

  • The court’s opinion suggests that the “immoral or scandalous” prohibition of Section 2(a) may likewise be unconstitutional.
  • The decision, if it stands, will clear the way for future registration of marks that people may consider even more offensive.
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Federal Circuit Clarifies Printed Matter Doctrine

Posted by Dan Rudoy on Apr 6, 2016

Dan Rudoy

The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) provided important guidance on the printed matter doctrine, which dictates that in some instances claim language reciting the  content of printed information carries no patentable weight, and vacated a Patent Trial and Appeal Board (PTAB or Board) decision that found a claim anticipated by improperly relying on this doctrine to ignore claim language.

What This Means to You

The judicially-created printed matter doctrine is sometimes used by the U.S. Patent and Trademark Office (USPTO) to avoid giving claim limitations any patentable weight—effectively reading such limitations out of the claims. As illustrated in In re: Thomas L. DiStefano, III, the USPTO sometimes misapplies the printed matter doctrine.

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Self-represented Inventors’ Unsuccessful Appeal Shows Value of Patent Attorneys

Posted by A.J. Tibbetts on Mar 30, 2016

A.J. Tibbetts

In re Steed stems from inventors’ attempts to represent themselves before a patent examiner, the patent office board of appeals, and the U.S. Court of Appeals for the Federal Circuit (Federal Circuit). While the inventors put forth a valiant effort, their attempt to make use of a complex patent office procedure fell flat because both their arguments and their evidence were insufficiently crisp and clear.

What This Means to You

  • “Swearing behind” a reference can be a great tactic in patent prosecution to prevent problematic references from being considered by an examiner.
  • Ensure your arguments and evidence are clearly tied to the claims under consideration.
  • This tactic can only be used under the “old,” pre-AIA statutes, for patent applications filed before March 2013.
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Supreme Court Takes Up First Design Patent Case in 100 Years

Posted by Jen Wang on Mar 25, 2016

Jen Wang

The U.S. Supreme Court has not reviewed a design patent case in over 100 years—until now.

On March 21, 2016, the Supreme Court agreed to review the highly publicized Apple v. Samsung case, in which Apple was awarded Samsung’s entire profits from smartphones that infringed Apple’s design patents covering the look of the iPhone.

The issue before the court is: Where a design patent covers only a component of a product, should damages be limited to the infringer’s profits attributable to the component, or should damages cover all of the infringer’s profits from the entire product?

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Obtaining a Permanent Injunction in Patent Cases Involving Complex Products

Posted by Jerry Hrycyszyn on Mar 23, 2016

Jerry Hrycyszyn

Apple, Inc. v. Samsung Electronics Co. Ltd. focuses on the first prong of the four-part test courts must apply in weighing whether to grant a permanent injunction in a patent infringement case—in particular, the “causal nexus” required between the alleged irreparable harm and the infringement.

What This Means to You

  • Plan early on the evidence you will need to support a permanent injunction.
  • Consider a narrowly focused injunction targeting only the patented features when complex, multi-featured products are at issue.
  • It is not necessary to show the patented features were the reason consumers purchased the product, but you will need to prove the patented features are important to consumers.

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Federal Circuit Finds Claims Not Indefinite in Post-Nautilus Case

Posted by Jen Wang on Mar 23, 2016

Jen Wang

 
Ethicon Endo-Surgery, Inc. v. Covidien, Inc. was decided by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) after the Nautilus decision, in which the U.S. Supreme Court created a new indefiniteness standard that is seen by many as setting a higher bar for the patentee. Even under this higher standard, however, the Federal Circuit in this case upheld the patent claims at issue, finding the claims not to be indefinite.

What This Means to You

  • To avoid indefiniteness, be careful when reciting parameters in claims—consider specifying a method of determining that parameter in the specification.
  • Special attention should be given when claiming a parameter that can be calculated/determined using more than one method.
  • This case provides an example of claims that have survived an indefiniteness attack post-Nautilus, and may be used to rebut indefiniteness arguments.
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Wolf Greenfield's CAFC Blog

Here, Wolf Greenfield attorneys summarize and identify key takeaways from recent patent law cases decided by the U.S. Court of Appeals for the Federal Circuit. View past case summaries here.

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.