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I know, but it's the best you can do without being able to see the future. At least the window of uncertainty gets a little smaller.
USPTO: Software Composition Inventions are Unpatentable under §101 unless they Clearly Disavow that the Storage Mechanism is a Transitory Wave or Signal
By Dennis Crouch Ex parte Mewherter (PTAB 2013) The USPTO has recently designated Ex parte Mewherter as a precedential decision with regards to its treatment of rejections under 35 U.S.C. § 101. The opinion basically holds that standard Beauregard claims (computer readable storage media) are n...
Why not cut to the chase and have preambles that say "A computer readable medium of the type that is deemed statutory under 101 as of the filing date of this application, the medium comprising..."
I suppose the downside is that, ironically,, given the state of the jurisprudence on this topic, that might trigger a 112 rejection for indefiniteness.
USPTO: Software Composition Inventions are Unpatentable under §101 unless they Clearly Disavow that the Storage Mechanism is a Transitory Wave or Signal
By Dennis Crouch Ex parte Mewherter (PTAB 2013) The USPTO has recently designated Ex parte Mewherter as a precedential decision with regards to its treatment of rejections under 35 U.S.C. § 101. The opinion basically holds that standard Beauregard claims (computer readable storage media) are n...
No deference to the examiner? I wonder if that's a backhanded comment about the overall quality of the examination process. Could be worse. They could have said there is a presumption the examiner is wrong.
Federal Circuit: No Deference to PTO Factual Findings from Prosecution
By Dennis Crouch Novo Nordisk v. Caraco Pharma (Fed. Cir. 2013) In a divided opinion, the Federal Circuit has affirmed a lower court trial ruling that Novo's diabetes treatment patent is invalid as obvious. The patent covers the use of a combination of repaglinide and metformin to stabilize a ...
In many common law jurisdictions, the statute of limitations begins running when the plaintiff learned of or should have learned of the harm complained of, not on the date the actual harm was committed. This is what enabled victims of child sex abuse by the church to sue so long after the fact. The latest D. Ct. decision doesn't seem to harmonize well with this.
COURT: Twelve Year Old USPTO Rules Cannot be Challenged Even if They Are Only Now Hurting You
Exela Pharma Sciences, LLC et al v. Kappos et al, 12-cv-0469 (E.D. Va. 2013). Download Exela v Kappos Dkt 55- Opinion dismissing case I previously wrote about Exela's lawsuit against the USPTO in an essay titled Suing the USPTO to Cancel Improperly Issued Patents. The patent at issue in this ca...
Is the orientation a feature of the design? If you rotated it 180 degrees so that the connecting bar is below, does that avoid the claim?
Apple Patents an Encircled Musical Note
One of Apple's most recent design patents is Patent No. D668,263. The patent claims "The ornamental design for a display screen or portion thereof with icon, as shown and described." As the image shows below, the patented ornamentation is basically the design of a musical note with a surrounding...
Liability associated with superhero activity was explored in "The Incredibles." Wasn't there a comic book once where Lex Luthor managed to engineer Superman's arrest?
New Book: Law of Superheroes
by Dennis Crouch The book that we've all been waiting for is finally out: The Law of Superheroes . I am serious here -- at least that I have been waiting for this book ever since I discussed the project with co-author James Dailey a few years ago when he visited the Mizzou campus. Daily and...
Not supposed to, but in a world dominated by text searching, that would seem to be a logical consequence. The prize would go not to the technically creative but to the semantically creative.
PTAB Backlog: Over the Hump!
By Dennis Crouch The new Patent Trial and Appeal Board has cause to celebrate! In 2008, the Board's backlog of pending ex parte appeals began to rise at an alarming rate. Being a government body, the alarms did not really begin to sound until 2010 and the fire trucks only recently arrived. Sin...
If you used the keyword "telephone", you would never have turned up Bell's original telephone patent. If an invention is truly novel, the word for it cannot exist yet.
PTAB Backlog: Over the Hump!
By Dennis Crouch The new Patent Trial and Appeal Board has cause to celebrate! In 2008, the Board's backlog of pending ex parte appeals began to rise at an alarming rate. Being a government body, the alarms did not really begin to sound until 2010 and the fire trucks only recently arrived. Sin...
So the Marines are looking for "less good men"?
"many are called, less are chosen"
About King Alfred, the few said the better.
The Patent Song (Musically Calling for More Reform)
It's easy. Going back to Ned's example, if you have a functional claim like "A car that can get 40 MPG" you could have a specification that sets out in gory detail exactly how to build that car. So in answer to the question "does the specification disclose how to build a car that gets 40 mpg?" the answer must be yes. Therefore the specification fully enables "a car that can get 40 mpg." Such a car is not unknown at all. One only has to read the specification to see it fully described.
On the other hand, that claim does not recite any structural features of such a car, only its intended result.
In reading 112, it looks like a lack of enablement is a defect in the specification, not of the claim, whereas a lack of definiteness is a defect in the claim, not of the specification.
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...
Yes, that's probably a more serious issue. You can't tell what is so special about the electrodes and the insulator that makes them yield more than a 10% change in R. Perhaps if they had referred to the lack of roughness that would have helped on the enablement problem. I think an indefinite claim can be enabled though.
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 am just worried that if his claim recites a top range of 11.8% and a defendant does 12% the best he can do is rely on DOE.
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...
But when you look at it literally, he did exactly that. His claim said "an electrical insulator between the first and second electrodes, wherein applying a small magnitude of electromagnetic energy to the junction reverses at least one of the magnetization directions and causes a change in the resistance by at least 10% at room temperature." He did show that he could go past 10% and that in fact he could reach 11.8%. How would you have drafted the claim to avoid the Magsil result? Would you have said "between 10% and 11.8%"? If so, how would you deal with a defendant who manages to get to 11.9%, or to 13%? Just rely on DOE?
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...
Can you think of a better way to get an open-ended range without being nailed by MagSil?
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...
There's a risk of what you're suggesting. But it might not be that high. For instance if I invent a new cookie recipe and the last step says "bake for a time between 10 minutes and an upper limit that any baker should be able to figure out" I am not admitting my recipe is known. I am merely saying that any baker of ordinary skill ought to know how high that upper limit is without undue experimentation. At trial, my plaintiff's expert would say "At the time of invention, any baker would have been able to note charring around the edges that would have signaled that upper limit."
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 guess I don't see that problem. The claim and spec aren't making any such admissions. The claim's upper limit is defined by the point at which undue experimentation is required. Thus, the claim is no longer to an open ended range. It defines an upper limit. This avoids the holding in MagSil. The defense's next step, with reliance on MagSil having been foreclosed, is to argue that the upper limit is indefinite. Not it is reduced to a battle of the experts. This is no slam dunk for plaintiff by any means, but it is much more promising to the plaintiff than being shot out of the water by MagSil.
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...
Actually, according to MPEP on enablement "a patent need not teach, and preferably omits, what is well known in the art. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991)." Therefore, the question to be resolved is this: Given the limitation "from X up to a value at which undue experimentation is required", is that upper value something that is already well known in the art. If the answer is yes, the law does not require it to be disclosed. I think the fact that a fact-finder was able to make a determination of that value is probative in suggesting that the answer to the question is "yes."
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...
Would there be something wrong with defining a range that says "from X up to a value at which undue experimentation is required to achieve said value"?
Surely that would not be "indefinite" because as this case amply demonstrates, a fact-finder was easily able to make just such a determination.
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...
Nuijten, which is often cited in these signal cases, actually has this quote in footnote 6:
"Of course, such a signal could be stored for later use, but the result of such storage would be a “storage medium” containing the signal. Such a storage medium would likely be covered by allowed Claim 15 of Nuijten's application, which is not before us on appeal."
The claims that didn't make it in Nuijten were the ones that boldly recited "A signal". Not the case here.
Avoiding Subject Matter Problems but Creating Written Description Problems
Since Bilski, the USPTO has been understandably struggling with its patentable subject matter procedures. This is especially true in the area of computer software. U.S. Patent No. 8,196,213 issued this week to Microsoft and is directed to a method of verifying un-trusted code. The original appli...
Maybe it's better to recite "A computer readable medium of the type that complies with section 101" and just get it over with. Then somewhere in the spec say "There are may kinds of computer readable media, including those not compliant with section 101 and those that are. I only intend the latter; the former are hereby dedicated to the public."
Avoiding Subject Matter Problems but Creating Written Description Problems
Since Bilski, the USPTO has been understandably struggling with its patentable subject matter procedures. This is especially true in the area of computer software. U.S. Patent No. 8,196,213 issued this week to Microsoft and is directed to a method of verifying un-trusted code. The original appli...
So someone could read the patent, think of the best mode himself, convince the PTO that it's a non-obvious improvement, and get on a patent on that himself. Then he could enforce it against the patentee's competitors (but not against patentee of course, who would defend himself by saying he had been practicing the best mode all along).
In Memoriam Best Mode
By Jason Rantanen When Congress passed the America Invents Act and President Obama signed it into law, courts were stripped of the power to declare patents either invalid or unenforceable for failure to disclose a best mode. While it is true that amended section 112 of Title 35 still technicall...
Wouldn't you need the "m" because it's not used in the nominative case but something else like accusative or genitive?
In Memoriam Best Mode
By Jason Rantanen When Congress passed the America Invents Act and President Obama signed it into law, courts were stripped of the power to declare patents either invalid or unenforceable for failure to disclose a best mode. While it is true that amended section 112 of Title 35 still technicall...
Really? I had no idea that (H+) + (e-) -> H involved a mass/energy conversion. I guess you must get it back going the other way? Does that also happen in chemical reactions? I know there's a change in Gibbs free energy between reactants and products but is there also a corresponding change in mass? Since Gibbs free energy is the difference between enthalpy and temp*entropy, does that mean a change in mass involves a change in entropy as well?
Punishing Prometheus: Part II - What is a Claim?
Guest Post by Robert R. Sachs of Fenwick & West LLP; Read Part I Yes, I said that: the Court does not understand the nature of patent law—more precisely, it does not understand what claims do. Reading the Court’s treatment of Prometheus’ claim, one would think that claims are some type of qualit...
Thank you. It will be difficult to forget how very smart you seem to be.
Punishing Prometheus: Part II - What is a Claim?
Guest Post by Robert R. Sachs of Fenwick & West LLP; Read Part I Yes, I said that: the Court does not understand the nature of patent law—more precisely, it does not understand what claims do. Reading the Court’s treatment of Prometheus’ claim, one would think that claims are some type of qualit...
I suppose if that happens it might be applicable. Does that sort of thing happen often? Any examples? I mostly associated E=mc**2 with energy produced as a result of fission or fusion.
Punishing Prometheus: Part II - What is a Claim?
Guest Post by Robert R. Sachs of Fenwick & West LLP; Read Part I Yes, I said that: the Court does not understand the nature of patent law—more precisely, it does not understand what claims do. Reading the Court’s treatment of Prometheus’ claim, one would think that claims are some type of qualit...
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