IP Blog
Miscellaneous
Federal Circuit Lets Patent Office Use Prosecution Laches Against Prolific Filer Hyatt
The Federal Circuit recently ruled in favor of the Patent Office asserting the rarely used doctrine of prosecution laches against serial patent applicant Gil Hyatt. Hyatt had brought an action in district court to order the Patent Office to grant multiple long-standing applications. The district court found in Hyatt’s favor and refused to apply prosecution laches. The Federal Circuit reversed...
35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.
In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The...
An Inventor Must Be a Natural Person, Not a Machine
The Bicentennial Man is out of luck.* The Patent Office recently issued a ruling that only a human can be an inventor. The application at issue listed “DABUS” as the sole inventor. DABUS is a collection of neural nets designed as a “creativity machine” by Stephen Thaler, who is also the assignee of the application. The application was filed with...
Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding
In William Grecia v. Samsung Electronics (Fed. Cir. 2019) the Federal Circuit affirmed a finding of invalidity for U.S. Patent 8,533,860 (the ‘860 patent) under 35 U.S.C. § 112, ¶2 (indefinite). The invalidly determination for the ‘860 patent was arrived at by the Court after a means-plus-analysis and invocation of 35 U.S.C. § 112, ¶6. Claim 21, the only claim...
Written Description Required to Claim Priority from a PCT
The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir. Mar. 14, 2018) the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision finding that an earlier-filed PCT application (Publication No....
When to Convert a CIP Patent Application into a Divisional
The Federal Circuit recently clarified the limits of the safe harbor provision of 35 USC §121. In In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision affirming invalidity of claims of US Patent 6,284,471 under the doctrine of obviousness-type double patenting. As...
Take Care with Patent Assignment Language
Written agreements discussing an employee’s obligation to patent assignment rights were insufficient to actually assign ownership in U.S .Patent No. 5,781,788, a divided Federal Circuit panel has held. Advanced Video Technologies LLC v. HTC Corp., Nos 2016-2309, 2016-2310, 2016-2311 (Fed. Cir. Jan 11, 2018) (precedential) (opinion by Judge Reyna, Judge O’Malley concurring and Judge Newman dissenting). Despite the panel’s disagreements...
Is a fail on §101 always “exceptional” under §285?
The answer to the question posed by the title is no, the Federal Circuit’s recent decision in Inventor Holdings, LLC v. Bed Bath & Beyond Inc., No. 2016-2442 (Fed. Cir. Dec. 8 2017) notwithstanding (reported on by this blog in “Attorney Fees Awarded for Post-Alice Patent Litigation”). Two recent district court patent cases in which the validity under 35 USC...
Effect of Assigning a Provisional Patent Application?
An assignment of “all inventions and improvements disclosed and described in said provisional application” was effective against later non-provisional applications claiming priority to the provisional application so long as there was no new matter. Separation Design Group LLP Holdings, LLC v. Inogen, Inc., No. LA CV15-08323 JAK (JPRx) (C.D. Cal. June 1, 2017). The question of the effect of assigning...
Volitional Conduct: an Element of Copyright Infringement
The Ninth Circuit Court of Appeals recently held in Perfect 10 v. Giganews, No 15-5550 (Jan 23, 2017), that an alleged copyright infringer can only be found directly liable if its “volitional conduct” actually causes the infringing activity to happen. Notably, the Court rejected Appellant’s argument that the Supreme Court’s ruling in American Broadcasting v. Aereo, Inc. removed this “volitional...