Podcast: Navigating the Fine Line Between Obviousness and Obviousness-Type Double Patenting

Partner Stephanie Lodise, Ph.D., and Patent Agent Tracy Palovich, Ph.D., break down the differences between obviousness rejections and obviousness-type double patenting rejections. They then provide important prosecution strategies how to respond to each type of rejection so as to maximize patent protection

Questions & Comments: slodise@bakerlaw.com

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Federal Circuit Requires Definitive Written Description Support for Quantitative Values and Ranges

Under U.S. law, every patent claim must be supported by an adequate written description, which conveys to those skilled in the art the nature and breadth of the invention.[1] The Federal Circuit recently decided two cases that found that claiming both a quantitative value and a quantitative range requires particular clarity in the disclosure.

In Indivior v. Dr. Reddy’s Laboratories,[2] Indivior appealed an inter partes invalidation of claims reciting polymer percent weight ranges in orally dissolvable films. Indivior argued that disclosure of specific formulations with the lower quantity of a claimed range (48.2 wt %) and the upper quantity of a claimed range (58.6 wt %) was sufficient to encompass the claimed ranges (40 wt % – 60 wt % and 58.6 wt % – 60 wt %). The Court disagreed and found that disclosing examples having only the upper and lower limits of a range is not sufficient to claim an entire range, stating that “more clarity is required” for adequate written description support of the claimed range.[3] The Court further rejected Indivior’s argument that if one looks to the specification’s tables and creates a range from the polymer weight percentages in the examples, then one has obtained the range. The Court stated that this act would “amount to cobbling together numbers after the fact”[4] and that Indivior did not demonstrate that a person of skill in the art would have understood that the specification was disclosing a range of polymer weights. Thus, the Federal Circuit affirmed the PTAB’s holding that the claims were invalid as lacking adequate written description.

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Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. This issue was recently addressed by the Trademark Trial and Appeal Board (TTAB) in In re California Highway Patrol, SN 88796327 (TTAB Nov. 4, 2021) [not precedential] (CHiP).

In CHiP, the TTAB dealt with an appeal from a refusal to register “MADE FOR MORE” for services “including employment-recruiting services, personnel recruitment, employment recruiting and staffing services, and recruitment and placement of personnel in the field of law enforcement.” Id. at p. 8. The U.S. Patent and Trademark Office (USPTO) examining attorney refused registration, contending the mark was not used to render a service within the meaning of the Trademark Act, and asserted the mark was used by the California Highway Patrol (Applicant) to recruit its own personnel and thus was not registrable. Id. at p. 2. The TTAB affirmed the refusal to register, denying registration under sections 1, 2, 3 and 45 of the Trademark Act.

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Identifying Novelty in Patent Harvesting Meetings

I recently received a call from a friend who expressed that his company is struggling with helping inventors identify a point of novelty for their ideas in their invention disclosure forms (IDFs), and as a result, it has been difficult to decide whether or not to move forward with their invention ideas.

As my friend is well aware, pursuing patent protection for a company’s inventions developed in the course of product development projects may deliver significant value back to the company. For example, a strong patent portfolio may protect investment in research and development, increase market and/or company value, secure market position, generate licensing revenue, and serve as a strong bargaining chip in cross-licensing negotiations. For these reasons, many companies task individuals, such as my friend, with supporting business and engineering units to harvest invention disclosures.

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Federal Circuit Requires Prior Art Be Analogous for Anticipation of Design Patents

Design patents offer valuable protection in a patent portfolio, including conferring different strategic advantages compared to those of utility patents. For example, design patents allow for recovery of “total profits” — not just lost profits or reasonable royalties as provided for infringed utility patents.[1] Likewise, design patents are not subject to attacks under 35 U.S.C. § 101, which can lead to a significant portion of utility patent invalidations that occur.[2] Further, while utility patents are frequently attacked in post-grant challenges before the PTAB, design patents are rarely challenged in that forum, and they face significantly lower rates of institution.[3] Finally, finding infringement of a design patent is relatively simple and straightforward under the applicable “ordinary observer” test. Specifically, if an ordinary observer would find the accused product to be “substantially the same” as the claimed design, there is infringement.[4]

On top of these benefits, the Federal Circuit recently provided another benefit to design patent applicants. In a unanimous precedential opinion, the panel decision of In re: Surgisil, LLP significantly narrowed the field of prior art that can be used to invalidate a design patent as anticipated.[5]

At issue in the case was a claim directed to an “ornamental design for a lip implant as shown and described”:

The PTO had rejected the design patent application, citing minor differences between the above lip implant and a Dick Blick art catalog that contained an image and description of an art tool called a stump:

The stump was described as being made of “tightly spiral-wound, soft gray paper” and used “for smoothing and blending large areas of pastel or charcoal.”[6]

The Federal Circuit found that the PTO had erred as a matter of law by finding that the lip implant design would be anticipated by the stump art tool. The court explained that “[a] design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.”[7] Therefore, prior art directed to the different field of art tools did not anticipate a lip implant design.

This ruling is significant in the realm of design patent law because it changes course from decades of prior practice at the PTO. Namely, examiners traditionally have been able to rely on prior art from any field to establish anticipation,[8] relying on a 1956 Court of Claims case, In re Glavas. The In re Surgisil opinion squarely rejects this 60-year-old rule.

The takeaway for patent owners is that it should be easier to obtain design patents because the realm of art for anticipation grounds significantly shrank due to the In re: Surgisil, LLP opinion.

[1] 35 U.S.C. § 289.

[2] In re Finch, 535 F.2d 70, 71-72 (C.C.P.A. 1976).

[3] Of the 1,513 AIA petitions filed in fiscal year 2020, just 20 were directed to design patents, and only 14% of such petitions were instituted. AIA Trial Statistics FY 2020 Roundup, at 6, 11 (Oct. 1, 2019, to Sept. 30, 2020), available at https://www.uspto.gov/patents/ptab/statistics.

[4] Egyptian Goddess Inc. v. Swisa Inc. 543 F.3d 665, 671 (Fed. Cir. 2008) (en banc). Notably, the claim scope is limited to the same article of manufacture enumerated in the claim. Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334 (Fed. Cir. 2019).

[5] 2021 WL 4515275, at *2 (Fed. Cir. Oct. 4, 2021).

[6] Id. at *1.

[7] Id.

[8] MPEP § 1504.02, Novelty, available at https://www.uspto.gov/web/offices/pac/mpep/s1504.html#d0e153408.

Federal Circuit Hints at Easier Service of Process on Foreign Defendants

In a recent decision, In re: OnePlus Technology (Shenzhen) Co., Ltd., Case. No. 21-165, Dkt. 20, the Federal Circuit denied China-based smartphone maker OnePlus’ petition for mandamus seeking to direct a Western District of Texas court (Judge Alan Albright) to dismiss the five underlying patent infringement actions for insufficient service of process. The Federal Circuit instead upheld the district court’s decision allowing plaintiff Brazos Licensing and Development to serve process on OnePlus’ attorneys (who had represented OnePlus in the past) and on OnePlus’ authorized agent in California instead of effecting traditional service on OnePlus through the Hague Convention.

Under the Hague Convention, each member state provides a “central authority” that is responsible for receiving and effecting service from abroad consistent with the member state’s domestic policies. However, as litigants against foreign IP infringers know all too well, service through the Hague Convention is notoriously slow and often expensive, especially in countries such as China, where it can sometimes take up to two years with countless bureaucratic red tape to effectuate service. Citing these roadblocks to serving OnePlus in China, plaintiff Brazos successfully argued to the district court that alternative means of service under Fed. R. Civ. P. 4(f)(3), permitting “other means [of service] not prohibited by international agreement, as the court orders,” were proper here.

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Courts Rule That AI Inventorship Can Rust in Peace

On Sept. 2, 2021, the U.S. District Court for the Eastern District of Virginia addressed what it called a “core issue”—whether an artificial intelligence (AI) machine can be an “inventor” under the Patent Act. It ruled that the “clear answer” is no.

The Patent Applications

Plaintiff Stephen Thaler, Ph.D., is the owner of a Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), which he claims is an artificial intelligence machine. Thaler listed DABUS as the inventor on two patent applications, one for a light beacon and one for a beverage container, which he filed with the United States Patent and Trademark Office (USPTO). The applications included a document through which DABUS had allegedly assigned all intellectual property rights in the claimed inventions to Thaler.

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Circuit Courts Continue To Limit Preclusive Effect of TTAB Decisions

On Sept. 17, 2021, the Third Circuit Court of Appeals became the latest Circuit Court to limit the preclusive effect of Trademark Trial & Appeal Board (“TTAB”) decisions. In 2015, the Supreme Court, in B&B Hardware,[1] decided in a 7-2 vote that issues decided in TTAB proceedings may have preclusive effect if the elements of issue preclusion are met. Since then, several Circuits have addressed the preclusive effects of TTAB decisions. Here, the Third Circuit, in Beasley v. Howard,[2] considered both claim and issue preclusion with respect to two separate TTAB decisions and a district court action. The Court held that the prior TTAB decisions did not preclude the appellant’s trademark infringement claim but would have precluded a relitigation of the fraud issue decided by the TTAB.

In Beasley v. Howard, two former bandmates each tried to claim prior rights in their group name, THE EBONYS. According to Beasley, he founded a band called The Ebonys in 1969, which performed off and on for decades. Howard joined the group in the 1990s. In 1997, Beasley obtained a New Jersey state trademark registration for THE EBONYS. Beasley and some of his original bandmates performed with Howard until eventually parting ways years later. Despite the breakup, Howard sought and obtained federal registration of THE EBONYS in 2012, listing himself as the sole owner of the mark.[3]

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No Wrong Notes: Federal Circuit’s Piano Factory Decision Holds TTAB in Tune with Arthrex

This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by [administrative patent judges, or APJs] during inter partes review [IPR] is incompatible with their appointment by the Secretary [of Commerce] to an inferior office.”[2] To resolve this constitutional defect in the IPR process, the Arthrex decision instructed that the director of the United States Patent and Trademark Office (USPTO) “may review final [Patent Trial and Appeal Board, or PTAB] decisions and, upon review, may issue decisions himself on behalf of the Board.”[3] The Court explained that this change in the director’s ability to supervise APJs (in adjudicating IPR petitions at the PTAB) was consistent with the rule that “the exercise of executive power by inferior officers must at some level be subject to the direction and supervision of an officer nominated by the President and confirmed by the Senate.”[4]

But what about the PTAB’s older sibling, the Trademark Trial and Appeal Board (TTAB)? Created through a Lanham Act amendment in 1958,[5] the TTAB is an administrative body at the USPTO that hears and decides various proceedings involving trademarks, such as oppositions and cancellations. Like the PTAB, which is composed of APJs, the TTAB is composed of administrative trademark judges, or ATJs. Like PTAB proceedings, TTAB proceedings are typically conducted before a panel of three ATJs, who preside over discovery, review briefing, hold hearings and issue final decisions. So, after Arthrex, are ATJs unconstitutionally appointed principal officers like their APJ cousins?

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Federal Circuit Takes Judicial Notice of Wayback Machine Evidence of Prior Art

In its Aug. 17 decision in Valve Corporation v. Ironburg Inventions Ltd., the Federal Circuit appears to have cleared the way for district courts to take judicial notice of Wayback Machine captures as evidence of prior-art printed publications.

As many readers of this blog will know, the Wayback Machine is an online digital archive of webpages. The archive is maintained by a nonprofit library called the Internet Archive. For patent challengers, the Wayback Machine is a useful tool for finding prior-art printed publications that potentially invalidate asserted patents. It is especially useful because the Wayback Machine maintains archival versions of websites and webpages that may no longer be functioning today. Continue Reading

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