IP Blog
Patent Prep and Pros Best Practices
Federal Circuit Vacates PTAB Opinion in Google Application
Google recently convinced a Federal Circuit panel to vacate a decision by the Patent Trial and Appeal Board that had found Google’s application obvious. The court decided that the Boardfailed to support the decision with sufficient reasoning. The claims in Google’s application pertained to delivering search results customized to an expected age of the searcher. The system calculates a “content...
Patent Office Introduces Deferred Responses for Subject Matter Eligibility Rejections
The Patent Office recently introduced a new pilot program called the Deferred Subject Matter Eligibility Response pilot program going into effect on February 1. As detailed in a Federal Register notice, the program permits applicants to delay responding to rejections for ineligible subject matter—e.g., that the claims are directed to an abstract idea or law of nature—until later in prosecution....
Prosecution Disclaimer Pitfalls
In Speedtrack, Inc. v. Amazon.com, Inc. (June 3, 2021), the Federal Circuit affirmed not only the district court’s findings relating to patent infringement, but also the importance of prosecution history when interpreting the claims. More specifically, the Federal Circuit affirmed a finding that Amazon.com et al. (“Amazon”) did not infringe U.S. Patent No. 5,544,360. The finding of infringement hinged on whether...
Means-Plus-Function Construction Can Lead to Indefiniteness
In Unicorn Global Inc. v. Golab, Inc. No. 3:19-CV-0754-N (N.D. Tex. May 26, 2020), the Northern District of Texas construed several disputed terms of U.S. Patent No. 9,376,155 and U.S. Patent No. 9,452,802, and found claims to be indefinite means-plus-function claims without having structure described in the specifications. The patents are directed to personal transportation devices known as hoverboards which include...
When Are Preambles Limiting?
In his recent article Without Preamble, Stanford professor Mark Lemley surveys the morass of law on determining when patent claim preambles are limiting, and he predicts that it will be swept away if the Supreme Court ever faces the issue. Given that possibility, how should practitioners think about drafting preambles when applying for a patent? Much of legal academic literature...
Claim Interpretation and Definiteness of Terms of Degree
In Kitsch LLC v. Deejayzoo, LLC (Case No. LA CV19-02556 JAK (RAOx)) the Central District of California interpreted claims of U.S. Patent No. 10,021,930 that included terms of degree as being sufficiently definite under 35 U.S.C. § 112. The case was initiated by Plaintiff Kitsch, who sought a judgment declaring invalidity of the ‘930 patent. The ‘930 patent is owned...
Claim Interpretation and the Enablement Requirement
Providing a reminder about how to interpret elements of a patent claim when analyzing the claim against prior art during patent prosecution, in Technical Consumer Products, Inc. v. Lighting Science Group Corp. (April 8, 2020), the Federal Circuit vacated a PTAB decision that Appellant Technical Consumer Products’ (“TCP”) failed to show that claims of U.S. Patent No. 8,201,968 were invalid...
Claim Term “Important” Leads to Indefiniteness
The Eastern District of Texas recently invalidated several patent claims that the court had found indefinite in a separate claim construction ruling in the case Uniloc 2017 v. Samsung. Interestingly, the court found the claim term “partition of important subject matter” indefinite in some claims and not others, despite stating that the claim term had the same meaning in all...
112 and the Zone of Uncertainty
In consolidated cases Niazi Licensing Corp. v. Boston Scientific Corp. and Niazi Licensing Corp. v. St. Jude Medical S.C. Inc. the district court found U.S. Patent 6,638,268 (“the ‘268 patent”) to be invalid under 35 U.S.C. § 112 for being indefinite and not particularly pointing out and distinctly claiming the subject matter which the inventor regards as the invention. The...
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...