This is John Roethel's Typepad Profile.
Join Typepad and start following John Roethel's activity
John Roethel
Recent Activity
In my opinion, §101 lists the categories that are eligible for patenting. Expressio unius est exclusio alterius.
I also agree with Federico that "anything under the sun that is made by man" that falls within these categories is eligible for patenting.
Notwithstanding §282, equity would seem to require that there must be some way (either a litigation defense or a PTO challenge process) to invalidate patent claims that have been granted covering subject matter that is not eligible for patenting.
Just as a probate court does not have the authority to conduct a criminal felony trial, the PTO does not have the authority (subject matter jurisdiction) to grant patent claims that fall outside of the categories of §101.
Why Section 101 is Neither a "Condition of Patentability" nor an Invalidity Defense
I raised this up a year or two ago, but what the heck... Here's a fuller statement. The Supreme Court was wrong to read 101 to limit eligible subject matter. Although it has done so for 50 years, it has never analyzed the statutes closely. Further, only in the last few years (Prometheus onwar...
Professor Kane also notes that the decision reaffirms the non-statutory principle that "discovery does not equal invention."
Curiously, the grant of power to Congress in the Constitution uses "discovery" rather than "invention."
Twenty Thoughts on the Importance of Myriad
By Dennis Crouch I asked a number of colleagues for their thoughts on the Supreme Court's recent Myriad Decision. However, I only allowed a 40 word statement from each. Most patent law specialists look at Supreme Court review with some trepidation. For many, the split decision comes with a sig...
"Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who assent to a special licensing agreement."
Is the outcome different without the special licensing agreement?
Supreme Court: Patent Rights Block Farmers from Saving and Re-Planting Patented Seeds
by Dennis Crouch Bowman v. Monsanto Company (Supreme Court 2013) In a short opinion a unanimous Supreme Court has sided with Monsanto in holding that the doctrine of patent exhaustion “does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder’...
Makes sense to me.
If the applicant has discovered that there is ONE specie that works and the applicant also knows that the other species do not work, then any claims covering an invention beyond that one specie should be invalid.
This seems equivalent to a US rejection under §101 for lacking utility.
Canadian Supreme Court Voids Pfizer’s Viagra Patent – Focusing Disclosure Requirement on the Patent as a Whole
Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60 (Supreme Court of Canada 2012) In a November 8, 2012 decision, the Supreme Court of Canada has ruled that Pfizer's Viagra patent is void for failure to satisfy the disclosure requirement of § 27 of Canadian patent law. See, Canadian Patent 2,1...
Here is the public policy argument: If you can assert this claim against a device switch that has a 600% change in resistance, shouldn't you have to show that your disclosure taught a PHOSITA how to make a device switch that has a 600% change in resistance, without undue expermentation?
Logical Conclusion?: Claimed Open-Ended Ranges Lack Enablement
By Dennis Crouch Magsil Corp. and MIT v. Hitachi (Fed. Cir. 2012) In a unanimous opinion, the Federal Circuit has affirmed a district court summary judgment holding that the asserted claims of MIT's patent are invalid for a lack of enablement. The patent covers read-write sensors for computer h...
I'd be most appreciative if someone smarter than I would explain what is meant by "the degree of relationship between the claim term and the interpretation of the claim term's construction."
Advanced Fiber Technologies v. J&L Fiber Services
By Jason Rantanen Advanced Fiber Technologies (AFT) Trust v. J&L Fiber Services, Inc. (Fed. Cir. 2012) Download 11-1243 Panel: Lourie (author), Dyk (dissenting in part), Prost This opinion provides guidance on the process of construing claim constructions and illustrates the continuing disagreem...
Maybe the D.Ct. Judge should sign up for your class.
By Dennis Crouch Astrazeneca v. Apotex, et. al...
By Dennis Crouch Astrazeneca v. Apotex, et. al (Fed. Cir. 2012) Next year, I will be teaching the required first year course here at Mizzou titled Civil Procedure II. It would not be too difficult to almost fill an entire civil procedure casebook with patent cases. In this decision, the court f...
Good example. I had a patent issued to a client where all the drawings were the wrong drawings. PTO would not republish the patent, but it was kind enough to issue a CofC.
Patented or Described in a Printed Publication
By Dennis Crouch The newly revised 35 U.S.C. § 102 states that no patent shall issue if "the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…" 35 U.S.C. ...
@Ned: It is sad that the adverb has died: He putts terrible.
It is sad that the subjective pronoun has died: Me and Joe went to the store. Joe is older than me.
It is also sad that the correct spelling of supersede is on life support.
Must be hard to grade the LSAT these days.
Patented or Described in a Printed Publication
By Dennis Crouch The newly revised 35 U.S.C. § 102 states that no patent shall issue if "the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…" 35 U.S.C. ...
I tried to concoct an example that was easy enough to stimulate some discussion, even from us mechanical guys. If I were king, I think I'd write the patent statute to make my example ineligible. However, under the statute as written and interpreted by SCOTUS, I don't see a straightforward way to reject the proposed claim.
It seems to me that the proposed method only applies a law of nature, but does not claim the law of nature, per se.
Mayo v. Prometheus Guest Post: The Hot-Button Issues
By Denise W. DeFranco of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. The decision in Mayo v. Prometheus is sure to be a close one, perhaps even a 5-4 decision, like many other Supreme Court's decisions concerning patent eligibility under section 101 of the patent statute. The outcome o...
the intracies of posting truncated my thoughts and your reply preempted my edit. I continue:
A method of determining direction comprising:
placing a magnetic needle on a surface of a pool of water and
determing the direction which the needle points.
The requirements of 102 and 103 would then follow based on the scope and content of the prior art.
Mayo v. Prometheus Guest Post: The Hot-Button Issues
By Denise W. DeFranco of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. The decision in Mayo v. Prometheus is sure to be a close one, perhaps even a 5-4 decision, like many other Supreme Court's decisions concerning patent eligibility under section 101 of the patent statute. The outcome o...
It would be helpful in the SC would define "law of nature."
Just as it would have been helpful if the SC had defined "abstract idea."
Presumably, the fact that certain metals are magnetic is a law of nature. And the fact that one of the poles of a magnet points North is a law of nature.
But I would submit that the following claim is patent eligible:
A method of determining direction comprising:
Mayo v. Prometheus Guest Post: The Hot-Button Issues
By Denise W. DeFranco of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. The decision in Mayo v. Prometheus is sure to be a close one, perhaps even a 5-4 decision, like many other Supreme Court's decisions concerning patent eligibility under section 101 of the patent statute. The outcome o...
TypePad HTML Email
@TF: Thanks
JER
From: TypePad
Recent patentable subject matter decisions at the BPAI
By Dennis Crouch Here are several recent BPAI decisions on patentable subject matter eligibility. New Rejection in Answer: Examiner's Answer raised new a new Section 101 issue, but applicant failed to respond in the reply brief. BPAI Holding: "We therefore summarily sustain this rejection." Ex...
Please help out an old guy struggling to keep up:
What is the WL in the case citation? Where can I find these decisions online so I can read them?
Thanks
Recent patentable subject matter decisions at the BPAI
By Dennis Crouch Here are several recent BPAI decisions on patentable subject matter eligibility. New Rejection in Answer: Examiner's Answer raised new a new Section 101 issue, but applicant failed to respond in the reply brief. BPAI Holding: "We therefore summarily sustain this rejection." Ex...
When I learned patent law at the Examiner training classes and in law school in the 1970's, I was taught that each claim is a separate invention. Basis is the language of 112¶2.
I was also taught that, prior to the 1952 Patent Act, that claims were often rejected/invalidated as "lacking invention." Again, I was taught that the 1952 Patent Act was passed, in part, to change this terminology.
A patent application is submitted with one or more claims, each claim setting out what the applicants regards as his invention. If a claim meets the requirements of the patent statute (primarily 101, 102, 103 and 112), the claim is a "patentable" claim.
I have read no cases that change any of this.
One of my concerns about the new patent statute is the definition of "claimed invention." This definition suggests that there may be something that could be called an "unclaimed invention." It's not nice to add more confusion.
Claim Construction in the Abstract
By Dennis Crouch Typhoon Touch Tech. v. Dell, Lenovo, Toshiba, Fujitsu, Sand Dune Ventures, Panasonic, Apple, HTC, and Palm (Fed. Cir. 2011) Touch screen technology has taken-off as an important element of consumer electronics. Typhoon's US Patent Nos. 5,379,057 and 5,675,362 cover various emb...
Man, I am way too old to be learning §102 all over again.
Nevertheless, am I correct that prior art will be broader than "printed publications" and "public disclosures"? According to the above text, "any disclosure" is the term used. This seems broader than "public disclosure."
Dennis: could you provide a link on this web site to a nice clean version of §§ 100-103 of the new law? Thanks
Disclosure under the AIA: Introducing The Poor Man’s Provisional Patent Application
By Dennis Crouch Provisional patent applications have received increasing focus as an integral element of corporate patent filing strategy. Although many patent attorneys reject this strategy, hopeful US-based patentees regularly use provisional applications as a cheap method for obtaining an e...
Ned, I must respectfully disagree with both you and Alun.
The term "invention" as used in the patent statutes means only a claim. §112, ¶2. Each claim is a separate invention. Id. A specification without a claim does not disclose an invention and does not meet the statutory requirement to be a specification. Id.
Now, once you have a claim, then the requirements of §112, ¶1 all make sense. You read each claim in light of ¶1 to see of all of the requirements of ¶1 are satisfied as to each claim.
For those who may disagree with my analysis, my question is: where do you look to find what the invention is?
Thank you for considering my argument.
Interpreting the Scope of Patent Assignments Beyond Family Members
MHL TEK v. Nissan, Hyundai, KIA, Porsche, Subaru, Audi, Volkswagen and BMW (Fed. Cir. 2011) MHL purported to obtain its patents from Animatronics and the inventors who themselves own MHL. However, Animatronics had already assigned a number of patent rights to a third-party, McLaughlin Electroni...
Each claim is an invention. §112, ¶2. Unless two claims are identical (which is not allowed), there cannot be more than one patent that claims "the invention."
Interpreting the Scope of Patent Assignments Beyond Family Members
MHL TEK v. Nissan, Hyundai, KIA, Porsche, Subaru, Audi, Volkswagen and BMW (Fed. Cir. 2011) MHL purported to obtain its patents from Animatronics and the inventors who themselves own MHL. However, Animatronics had already assigned a number of patent rights to a third-party, McLaughlin Electroni...
While Richard's talent as a musician may be moderate, his estimated wealth of 150 Million pounds is noteworthy as is his status as an MBE.
http://en.wikipedia.org/wiki/Ringo_Starr
Tees & Radar: Patent Pendency 2011
I updated my patent database to include all patents issued thus far in 2011. For 2011, the median original patent issued in 3.8 years (4.0 years average pendency). For patents issued from continuation and divisional applications, the 2011 median pendency was 2.4 years (3.0 years average penden...
I'm a mechanical guy, so I don't pretend to understand the subtleties of chem practice. But...
If only three species have utility (because the other 9997 do not work), why is the suggested genus claim necessary? Can't you get the needed patent coverage (which would be concomitant with the disclosure) by just writing three independent species claims?
The three species claims would also seem to cover exactly what the inventors discovered [alert: use of constitutional term -- "discoveries"] since the inventors did not discover any other species that worked.
USPTO Proposes to Modify Applicants Duty to Disclose, Following Therasense in Limiting the Scope of Materiality
In a four-page Federal Register notice of proposed rulemaking of proposed rulemaking, the US Patent Office has indicated its intent to revise its duty-to-disclose standards based upon the recent Federal Circuit en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., --- F.3d --- (Fed. C...
I have a Kindle 1 which includes an SD slot for transferring data to and from the Kindle. Also, the Kindle TOS allows the sharing of books across up to 6 registered Kindles. Finally, there is a Kindle app for the iPad and for a PC so you can synch your books between devices.
Advice on Kindle vs Nook vs iPad
I am considering purchasing an e-reader. I am currently leaning toward the Kindle, but am also considering the Nook and the iPad. In addition to novels and casebooks, I'm also hoping to use the device to read law review articles and Federal Circuit patent decisions that are currently in PDF for...
There's a lot to be said for the dissent's argument that the Court has made up a new standard of liability out of thin air. Perhaps this augurs the coming "beyond a reasonable clear and convincing showing of the preponderance" standard for patent invalidity.
Global-Tech v. SEB: Supreme Court Affirms CAFC Result But Not "Deliberate Indifference" Standard
By Jason Rantanen Global-Tech Appliances, inc. v. SEB S.A. (2011) Download Global-Tech v SEB Majority: Alito (author), Roberts, C.J., Scalia, Thomas, Ginsburg, Breyer, Sotomayor, Kagan. Dissent: Kennedy. In an 8-1 decision this morning, the Supreme Court affirmed the result in Global-Tech v. S...
If the specification is supposed to be the primary source for what a term means, and if a dictionary is supposed to be the secondary source for what a term means, wouldn't a judge's opinion of what a term means be pretty low on the resource list?
The Thesaurus of Claim Construction
Several years ago, Stuart Soffer told me about his claim construction thesaurus project. At the time, I thought that the result would be amazing, but that the project was clearly too ambitious. I was both surprised and happy when Oxford Press sent me the completed 1,000 page volume. The book, c...
While noting that bananas are an excellent source of potassium, Judge Rich disagrees with your characterization.
In re Katz: Managing Complex Patent Suits
By Jason Rantanen In re Katz Interactive Call Processing Patent Litigation (Fed. Cir. 2011) Panel: Newman, Lourie, Bryson (author) Patent litigation is often an astonishingly complex affair. As proof, one need look no further than In re Katz, an opinion that demonstrates both the heavy burden t...
That's SARAH PALIN(tm) to you.
A new source of revenue for the trademark lawyers who otherwise represent the NFL for two weeks each year.
Patently-O Bits & Bytes
By Lawrence Higgins Upcoming Events: The Churchill Club will hold their Great Debate on the topic, "Is Software Patentable? Should it be?" on February 16 in California. [Link] The Texas Intellectual Property Law Journal is hosting its annual Intellectual Property Symposium entitled "Creati...
More...
Subscribe to John Roethel’s Recent Activity