USPTO Examiner Guidelines Post - Alice v. CLS BankUSPatentsNMore
USPTO Preliminary Examination Instructions in view of U.S. Supreme Court decision Alice Corporation Pty. Ltd. v. CLS Bank International, et al.
Issued June 25, 2014.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Judgment of Infringement Entered as Sanction
• Patent Exhaustion Does Not Apply to Harvested Seeds
• Judges Disagree on § 101 Standards
• Litigation Is Not a Domestic Industry
As represented by “Smartphone Patent Wars,” patents for smartphones became the most
important strategic competition tool among market leaders. Especially, patents for mobile
communication standards, which are the so-called ‘Standard Essential Patents (SEPs),’ became
the center of legal and policy debates regarding their intellectual property rights (IPRs).
The author provides the implications of recent courts’ resolutions regarding FRAND
(Fair, Reasonable And Non Discriminatory) disputes to the ICT (Information and
Communications Technology) industry and provide several alternative options for resolving
FRAND disputes. The author contends that the current concerted resolutions in courts and
regulation agencies can results in adverse effects to the ICT industry. The author also contends
the main drawback of the recent proposals to resolve the disputes surrounding SEPs through the
ex ante FRAND licensing and the ICT industry players’ voluntary collaboration. From the
analysis of ICT industry players’ response to the outcomes of court resolutions, the author
contends a compromising way to provide FRAND Royalty adopting arguments from both sides
of the disputes. The author also contends a practical improvement to the voluntary collaboration
proposals to resolve the disputes surrounding SEPs.
USPTO patent 13573002 final rejection responseSteven McGee
patent application 13/573,002 Supreme Court Alice Corp V CLS Bank compliant application "claims may not direct towards abstract ideas" implies requirement for physical meme. Little League Baseball Tournament physical meme first (and best) physical meme embodiment compliant with SC Alice Corp Vs CLS Bank see http://sawconcepts.com/index/id46.html
Complaint to ESTI (European Technical Standards Institute) from Telesaurus, Skybridge, Havens, concerning Motorola refusal to license its US patents for TETRA, to block TETRA sales and use in the United States. See more at www.tetra-us.us.
USPTO Examiner Guidelines Post - Alice v. CLS BankUSPatentsNMore
USPTO Preliminary Examination Instructions in view of U.S. Supreme Court decision Alice Corporation Pty. Ltd. v. CLS Bank International, et al.
Issued June 25, 2014.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Judgment of Infringement Entered as Sanction
• Patent Exhaustion Does Not Apply to Harvested Seeds
• Judges Disagree on § 101 Standards
• Litigation Is Not a Domestic Industry
As represented by “Smartphone Patent Wars,” patents for smartphones became the most
important strategic competition tool among market leaders. Especially, patents for mobile
communication standards, which are the so-called ‘Standard Essential Patents (SEPs),’ became
the center of legal and policy debates regarding their intellectual property rights (IPRs).
The author provides the implications of recent courts’ resolutions regarding FRAND
(Fair, Reasonable And Non Discriminatory) disputes to the ICT (Information and
Communications Technology) industry and provide several alternative options for resolving
FRAND disputes. The author contends that the current concerted resolutions in courts and
regulation agencies can results in adverse effects to the ICT industry. The author also contends
the main drawback of the recent proposals to resolve the disputes surrounding SEPs through the
ex ante FRAND licensing and the ICT industry players’ voluntary collaboration. From the
analysis of ICT industry players’ response to the outcomes of court resolutions, the author
contends a compromising way to provide FRAND Royalty adopting arguments from both sides
of the disputes. The author also contends a practical improvement to the voluntary collaboration
proposals to resolve the disputes surrounding SEPs.
USPTO patent 13573002 final rejection responseSteven McGee
patent application 13/573,002 Supreme Court Alice Corp V CLS Bank compliant application "claims may not direct towards abstract ideas" implies requirement for physical meme. Little League Baseball Tournament physical meme first (and best) physical meme embodiment compliant with SC Alice Corp Vs CLS Bank see http://sawconcepts.com/index/id46.html
Complaint to ESTI (European Technical Standards Institute) from Telesaurus, Skybridge, Havens, concerning Motorola refusal to license its US patents for TETRA, to block TETRA sales and use in the United States. See more at www.tetra-us.us.
Topics covered in this month’s trademark prosecution presentation include discussions of recent changes to the TEAS system, Patent and Trademark Office alerts, trademark foreign equivalents, scandalous marks, and state sovereign immunity.
9 Block Buster Initial Patent Damages Awards In The USGreyB
The number of patent cases filed in the US, on average 4500 to 5500 in the last two year, is way more than any other country in the world. Hence, there is no dearth of patent lawsuits in the US where huge damages were awarded to plaintiffs.
Having that in mind, we thought to compile nine initial damages awarded since 1991. Among these nine, eight touched the $1bn mark. Some among these were settled while pending appeal – CMU vs Marvell, some are still under appeal, and some got remanded or reduced – Alcatel Lucent vs Microsoft, for example.
So let’s have a look why judges awarded big initial damages first and how later a defendant decreased the amount.
PELTON PowerPoint: ABA Cyberspace Institute 2011-01-28erikpelton
"Trademark Strategies for 2012" Presentation to the American Bar Association's Cyberspace Institute in Austin Texas on January 28, 2011. The presentation explores recent changes to the practice of trademark law, and what the future might hold for trademark owners and attorneys who advise them.
This document explains the issues associated with obtaining software patent authorization by the United States Patent and Trademark Office as a result of the SCOTUS decision in Alice Corporation versus CLS Bank International.
In this short presentation, I define standard essential patents and RAND using the Wi-Fi standard as an example.
Beyond a basic definition, however, this presentation touches on the practical ramifications (both at a legal and corporate/financial level) that may lead to the current, ongoing SEP-related court cases.
FORMAT FOR CASE BRIEF Virtually all of the cases in thi.docxbudbarber38650
FORMAT FOR CASE BRIEF
Virtually all of the cases in this text (and all legal texts for that matter) are at
an Appellate/Supreme Court level (not a trial court), where Issues of Law
are resolved, as opposed to issues of fact which are resolved at the trial
court level.
This suggested format is a slight modification of an outline for Case Briefs
used in the legal profession. (Example - Text Pg 4 – Case 1.1)
Style of Case and Citation:
Example - United States of America v. Martha Stewart and Peter Bacanovic
U.S. District, LEXIS 12538 (2004)
Court Rendering Final Decision:
Example - U.S. 2nd Circuit Court Of Appeals
Identification of Parties and Procedural Details: Who is the Plaintiff/Appellant?
Who is the Defendant/Appealer? What is the cause of action? Who prevailed in lower
court? Who is appealing to what court?
Example - Original Defendants, Martha Stewart and Peter Bacanovic, are Appealing
their conviction for Insider Trading in the Federal District Court by the U.S.
Department of Justice, and asking for a New Trial based on a Claim of Perjury by the
Prosecution's Expert Star Witness - Lawrence F. Stewart of the U.S. Secret Service.
District Court found insufficient evidence for invalidating the Jury/Court Decisions,
and Stewart and Bacanovic are Appealing to the U.S. 2nd Court of Appeals.
Discussion of the Facts: Who did what to whom? What relief is being sought?
Example - Defendants were trading ImClone Stock based on insider information one
day prior to a Public Announcement of damaging financial information regarding
ImClone Corporation. Both Defendants were also accused of lying to FBI Agents
during an investigation of the Insider Trading Claim.
Statement and Discussion of the Legal Issues in Dispute: What decision of the
lower court is being challenged? What specific legal questions is the subject court
being asked to address? Is the question about Common-Law? A Statute?
Example – The Defendants are challenging the District Court's Denial of their right to
a re-trial based on the presumed Perjury of the Expert Witness. This is a question of
2
Federal Statutory Court Procedure, which did not require an investigation of the
truthfulness of witnesses Testimony.
Subject Court Final Decision: For Plaintiff? For Defendant? What happens next?
Example – Ruling is in favor of U.S. Prosecutors. The conviction of Martha Stewart
and Peter Bacanovic in District Court is Affirmed. Request for a New Trial is
Denied.
Summary of This Final Court’s Reasoning: What is the legal basis for the court’s
decision? Be sure to include relevant Dissenting Opinions.
Example – The Testimony of Lawrence F. Stewart was not reviewed for Perjury by
the Court of Appeals because his Testimony was not successfully challenged in
District Court, and was supported by three other witnesses. Even if Mr. Stewart had.
This presentation by Maurits Dolmans from Cleary Gottlieb was made during a roundtable discussion on Competition, Intellectual Property and Standard Setting held at the 122nd meeting of the OECD Competition Committee on 17 December 2014. Find out more at http://www.oecd.org/daf/competition/competition-intellectual-property-standard-setting.htm
Topics covered in this month’s patent prosecution presentation included:
- Discussion of inequitable conduct cases post-Therasense
- A recent claim construction case in which the Federal Circuit was somewhat in conflict over the best manner for claim construction
- The business method patent review section of the HR 1249-America Invents Act
- Recent Supreme Court cases Kappos v. Hyatt and Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S.
Topics covered in this month’s trademark prosecution presentation include discussions of recent changes to the TEAS system, Patent and Trademark Office alerts, trademark foreign equivalents, scandalous marks, and state sovereign immunity.
9 Block Buster Initial Patent Damages Awards In The USGreyB
The number of patent cases filed in the US, on average 4500 to 5500 in the last two year, is way more than any other country in the world. Hence, there is no dearth of patent lawsuits in the US where huge damages were awarded to plaintiffs.
Having that in mind, we thought to compile nine initial damages awarded since 1991. Among these nine, eight touched the $1bn mark. Some among these were settled while pending appeal – CMU vs Marvell, some are still under appeal, and some got remanded or reduced – Alcatel Lucent vs Microsoft, for example.
So let’s have a look why judges awarded big initial damages first and how later a defendant decreased the amount.
PELTON PowerPoint: ABA Cyberspace Institute 2011-01-28erikpelton
"Trademark Strategies for 2012" Presentation to the American Bar Association's Cyberspace Institute in Austin Texas on January 28, 2011. The presentation explores recent changes to the practice of trademark law, and what the future might hold for trademark owners and attorneys who advise them.
This document explains the issues associated with obtaining software patent authorization by the United States Patent and Trademark Office as a result of the SCOTUS decision in Alice Corporation versus CLS Bank International.
In this short presentation, I define standard essential patents and RAND using the Wi-Fi standard as an example.
Beyond a basic definition, however, this presentation touches on the practical ramifications (both at a legal and corporate/financial level) that may lead to the current, ongoing SEP-related court cases.
FORMAT FOR CASE BRIEF Virtually all of the cases in thi.docxbudbarber38650
FORMAT FOR CASE BRIEF
Virtually all of the cases in this text (and all legal texts for that matter) are at
an Appellate/Supreme Court level (not a trial court), where Issues of Law
are resolved, as opposed to issues of fact which are resolved at the trial
court level.
This suggested format is a slight modification of an outline for Case Briefs
used in the legal profession. (Example - Text Pg 4 – Case 1.1)
Style of Case and Citation:
Example - United States of America v. Martha Stewart and Peter Bacanovic
U.S. District, LEXIS 12538 (2004)
Court Rendering Final Decision:
Example - U.S. 2nd Circuit Court Of Appeals
Identification of Parties and Procedural Details: Who is the Plaintiff/Appellant?
Who is the Defendant/Appealer? What is the cause of action? Who prevailed in lower
court? Who is appealing to what court?
Example - Original Defendants, Martha Stewart and Peter Bacanovic, are Appealing
their conviction for Insider Trading in the Federal District Court by the U.S.
Department of Justice, and asking for a New Trial based on a Claim of Perjury by the
Prosecution's Expert Star Witness - Lawrence F. Stewart of the U.S. Secret Service.
District Court found insufficient evidence for invalidating the Jury/Court Decisions,
and Stewart and Bacanovic are Appealing to the U.S. 2nd Court of Appeals.
Discussion of the Facts: Who did what to whom? What relief is being sought?
Example - Defendants were trading ImClone Stock based on insider information one
day prior to a Public Announcement of damaging financial information regarding
ImClone Corporation. Both Defendants were also accused of lying to FBI Agents
during an investigation of the Insider Trading Claim.
Statement and Discussion of the Legal Issues in Dispute: What decision of the
lower court is being challenged? What specific legal questions is the subject court
being asked to address? Is the question about Common-Law? A Statute?
Example – The Defendants are challenging the District Court's Denial of their right to
a re-trial based on the presumed Perjury of the Expert Witness. This is a question of
2
Federal Statutory Court Procedure, which did not require an investigation of the
truthfulness of witnesses Testimony.
Subject Court Final Decision: For Plaintiff? For Defendant? What happens next?
Example – Ruling is in favor of U.S. Prosecutors. The conviction of Martha Stewart
and Peter Bacanovic in District Court is Affirmed. Request for a New Trial is
Denied.
Summary of This Final Court’s Reasoning: What is the legal basis for the court’s
decision? Be sure to include relevant Dissenting Opinions.
Example – The Testimony of Lawrence F. Stewart was not reviewed for Perjury by
the Court of Appeals because his Testimony was not successfully challenged in
District Court, and was supported by three other witnesses. Even if Mr. Stewart had.
This presentation by Maurits Dolmans from Cleary Gottlieb was made during a roundtable discussion on Competition, Intellectual Property and Standard Setting held at the 122nd meeting of the OECD Competition Committee on 17 December 2014. Find out more at http://www.oecd.org/daf/competition/competition-intellectual-property-standard-setting.htm
Topics covered in this month’s patent prosecution presentation included:
- Discussion of inequitable conduct cases post-Therasense
- A recent claim construction case in which the Federal Circuit was somewhat in conflict over the best manner for claim construction
- The business method patent review section of the HR 1249-America Invents Act
- Recent Supreme Court cases Kappos v. Hyatt and Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S.
1. List of interesting patent case law of 2010
Last updated: 2010-04-23
Previously updated: 2010-03-09
All cases that have been added to the list since the previous update are displayed in RED.
This document contains some interesting case law from 2010 in my opinion and in view of
practical aspects for a patent attorney working in the field of electronics and
telecommunications. Therefore, interesting case law for people working in the chemical or
biotech area has sometimes not been mentioned here. I also try to cover all US patent
precedential decisions of CAFC and BPAI irrespective of their relevance in practice.
The list is a censored list of a more informative list compiled for Ericsson internal use only.
I would of course appreciate any feedback on errors and interesting, missing case law. There
are plenty of countries, whose case law I do not know how to follow. In fact the purpose of
publishing this list is for me to become aware, via your feedback, of case law that I might
find interesting.
Last but not least, a special thanks to all courts and offices that publishes their decisions on
the web as well as public blogers who keep me updated.
Sites and blogs that directly or indirectly have contributed to the cases below are:
United States Court of appeals for the Federal circuit
Patently-O
The 271 Patent Blog
European Patent Office
Reinhold Cohn
Linklaters
Le Conseil D’État et La Jurisdiction Administrative
Der Bundesgerichtshof
Delhi High Court
Dewey & LeBoef IP watch
Patent Prospector
Best regard, Fredrik Egrelius (fredrik.egrelius@ericsson.com)
::::::::::::::::::::::::::::::::::::::
EPO
Enlarged Board of Appeal G-decisions
2. G4/08 Language of proceedings/Merial, if PCT-application published in official EPO language
that language must be maintained in the regional phase before EPO
G2/08 Dosage Regime/Abbott Respiratory LLC, G5/83 superseeded and Swiss-type claims
no longer admissible three months after publication of the decision in OJ
G1/07 Method for treatment by surgery/Medi-Physics Inc
France
Interesting cases from the Supreme Administrative Court
(Conseil d'Etat)
No. 320319 Michel Puech v. Centre National de la Recherche Scientifique, right to patent
originating from master thesis conducted as intern at CNRS
Germany
Interesting Federal Court of Justice (Bundesgerichtshof)
decisions
X ZR 27/07 File names/Microsoft Corp, European patent on File name system, see press
release from BGH here
Great Britain
Interesting Court of Appeal decisions 2010
3. Actavis UK Ltd v. Eli Lilly & Co. Ltd, shared cost for unsuccessfully attempting to revocate
patent even if one of the two plaintiffs withdrew his actions before court decision
India
Interesting decisions from the High Court of Delhi
W.P.(C) No. 9126 of 2009 Telefonaktiebolaget LM Ericsson (Publ) v. Union of India & Ors,
application cannot be deemed abandoned when it is rejected
Israel
Committee for Compensation and Royalties
February 2010, Actelis networks v. Yishai Ilani, compensation for invention made by
employee if not waived in agreement with employer
USA
Federal Circuit Precedential decisions
2010-1001 Novo Nordisk A/S and Novo Nordisk, Inc. v. Caraco Pharma. Labs. Ltd. and Sun
Pharma. Industries, Ltd., Hatch-Waxman Act
2009-1543 Hornback v. US, use of invention according to 35 USC § 183 does not include
use after issuance of patent
4. 2009-1504 (reissue) I4I Ltd Partnership and Infrastructures For Information Inc. v. Microsoft
Corp., order here
2009-1471 Clearplay, Inc. v. Max Abecassis and Nissim Corp., lack of jurisdiction
for CAFC over appeal and Christianson test
2009-1418 In re Suitco Surface, Inc, broadest reasonable interpretation
2009-1406 Harari and Mehrotra v. Hollmer and Cleveland, incorporation by reference of an
application without serial number must be ascertainable by the examiner
2009-1395 Davis v. Brouse Mcdowell, L.P.A and Thomson, prove causation between patent
attorney malpractice and possibility of patent protection, expert's naked opinion insufficient
to survive summary judgement
2009-1374 Tivo Inc. v. Echostar Corp. et al, contempt of court's permanent injunction
2009-1364 Hearing Components, Inc. v. Shure Inc., definiteness and scope of means-plus-
function features
2009-1357 Delaware Valley Floral Group, Inc. et al v. Shaw Rose Nets, LLC and Shaw, no
admission to change testimony of date in depostion, if request made after the 30 days of
revieing the deposition statement
2009-1281 Enzo Biochem, Inc. et al v. Applera Corp. and Tropix, Inc., indefiniteness under §
112 (2) and the meaning of the word "substantially" in claims
2009-1270 In re Chapman and King, interpretation of the harmful error rule of
Administrative Procedure Act in the inventive step context
2009-1262 SIRF Technology, Inc et al v. ITC and Broadcom Corp and Global Locate, Inc.,
assignment under Federal patent law v. state law, patentable subject matter and joint
infringement
2009-1258 (revised) Vanderbilt University v. Icos Corp, proof of collaboration needed for
joint inventorship
2009-1247, -1249 Comaper Corp. v. Atnec, Inc., et al, remand for new trial on invalidity
when district court jury found independent claims not obvious and dependent claims obvious
2009-1241 Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Company, sua
ponte summary judgement and interference
2009-1120 Wyeth and Elan Pharma International, Ltd v. Sec. of Commerce for Intellectual
Property and USPTO, determination of patent term extension under § 154(b)
2009-1099, -1108... SEB S.A. and T-Fal Corp. v. Montgomery Ward & Co. Inc, et al, induced
infringement and distinction between deliberate indifference and should-have-known
2009-1085 Innovative Therapies, Inc. v. Kinetic Concepts, Inc. et al., mere existence o an
adversely held patent is not sufficient to establish adverse legal interest and thus a
declaratory judgement
2009-1081 Ajinomoto Co, inc., and Ajinomoto Heartland LLC v. ITC et al, invalidity for
5. failure to comply with the best mode requirement
2009-1032 Boehringer Ingelheim International GmbH and Boehringer Ingelheim Pharma.,
Inc v. Barr Labs. Inc et al, terminal disclaimer not valid when underlying patent expired and
safe-harbor of 35 U.S.C 121 against obviousness-type double patenting accusations for
divisional of a divisional
2009-1031 Marrin and ETCH-IT, Inc. v. Griffin, product claim with preamble stating "for
permitting a user to write thereon..."non-limiting
2009-1022 Media Technologies Licensing, LLC, v. The Upper Deck Company, LLC et al.,
obviousness for memorabilia card with famous person
2009-1008, -1009...Therasense, Inc and Abbott Labs. v. Becton, Dickinson and Company
and Nova Biomedical Corp, harmless anticipation error by jury when overwhelming evidence
of obviousness
2008-5181 Honeywell International, Inc and Honeywell Intellectual Properties, Inc. v. US et
al, damages and compensation under the Invention Secrecy Act and the first sale doctrine,
errata here
2008-1602 (revised) Pressure Products Medical Supplies, Inc. v. Greatbatch Ltd, structural
support for means-plus-function cannot rely on simply mentioning prior art references in
description
2008-1597 Laboratory Corp. of America Holdings v. Metabolite Labs. Inc., appellate
jurisdiction for patents and know-how license issues not involving substantial issues of
patent law
2008-1596 Crocs, Inc v. ITC et al. reversal of non-obviousness, errata here
2008-1578 Yorkey v. Diab et al., written description requirement and sufficiency of support
2008-1577 Yorkey v. Diab et al., written description requirement and evidence of reduction
to practice
2008-1511, -1512... Therasense, Inc and Abbott Labs. v. Becton, Dickinson and Company et
al., obviousness and inequitable conduct
2008-1501, -1507 Power-One, Inc. v. Artesyn Techs., Inc., interpretation of the words
"adapted to" and "near" in claims
2008-1500 Anascape, Ltd v. Nintendo of America, Inc., entitlement to priority date if i meets
§ 112
2008-1392, -1393, -1422 Trading Technologies Int. Inc. v. Espeed, Inc. et al, infringement
case for software for displaying the market for a commodity traded in an electronic
exchange
2008-1365, -1366, 2009-1030 Resqnet.com, Inc. et al v. Lansa, Inc., royalty rates and
award of damages for patent infringement and sufficiency of expert testimony
2008-1288 MBO Labs. Inc. v. Becton, Dickinson & Company, violation of rule against
6. recapture by claiming in a reissue previously surrendered subject matter in a related
application
2008-1248 Ariad Pharma. Inc. et al v. Eli Lilly and Company, written description and
enablement different criteria
2007-1066 Hyatt v. USPTO, nonprecedential order to hear the case en banc
2006-1522 HIF Bio, Inc. and Bizbiotech Co., Ltd v. Yung Shin Parma. Industrial Co. Ltd et al
Interesting 7th circuit decision
08-1351, 06-3901 Wisconsin Alumni Research Foundation v. Xenon Pharmaceuticals, Inc,
royalty when shared ownership of patent
Precedential BPAI decisions 2010
2009-006013 Ex parte Frye, Review de novo but generally not uncontested aspects of
USPTO rejections