Patent Law Practice Center

Goeddel V. Sugano: What’s The Difference Between “Envisioning” An Invention And Being “In Possession” Of The Invention?

The following post was written by Gerald M. Murphy, partner at Birch, Stewart, Kolasch & Birch, LLP and Practice Center Contributor.

In Goeddel v. Sugano, the Court of Appeals for the Federal Circuit (CAFC) has provided more guidance as to what is necessary for a sufficient “written description” of an invention, this time for a true “biotech” invention, in the context of a motion for benefit of priority in an interference.  This case involved two interferences; one directed to DNA encoding human fibroblast interferon (hFIF) unaccompanied by a hFIF presequence (mature hFIF) and one directed to a composition comprising  non-glycosylated hFIF.  Sugano filed a motion for benefit of its Japanese priority application (Sugano priority application) and was granted priority by the Board of Patent Appeals and Interferences (the Board) in both interferences.  Goeddel appealed that decision on the grounds that the Sugano priority application did not constitute a constructive reduction to practice because it did not enable the Counts and did not provide a sufficient written description of the Counts.  The Federal Circuit reversed on the ground that the Sugano priority application did not provide a sufficient written description of the Count because the inventors were not “in possession” of the invention. Read the rest of this entry »

Samsung Attack on Antenna Patents among Reexamination Requests Filed Week of September 27th

Here is this week’s  installment of Reexamination Requests from Scott M. Daniels, of Reexamination Alert and Practice Center Contributor….

Samsung filed reexamination requests (Inter partes Nos. 4, 10 and 11) last week against three Fractus patents for antennas.  Fractus had sued Samsung and quite a number of other wireless companies, including LG, Research in Motion, Kyocera, HTC, Sharp and Sanyo, for infringement of those patents.

Also of interest is a request (Inter partes No. 1) filed by CEJN AB against Westendorf Mfg.’s U.S. Patent No. 7,717,471 for a hydraulic line device.  The two companies are already in a reexamination of Westendorf’s U.S. Patent No. 7,021,668 – the examiner’s rejection of the claims of the ‘668 is now before the PTO Board of Appeals.

Finally, Encore filed a request (Inter partes No. 12) against a Southwire patent for electrical cables.  Southwire is noted among ITC practitioners for having filed in the late 1970’s the first major Section 337 complaint. Read the rest of this entry »

Microsoft v. i4i: Amici Make Strong Argument for Supreme Court Review of Patent Invalidity Standard

The following post comes from one of our newest Practice Center Contributor’s Clement S. Roberts.  Mr. Roberts is a founding partner at Durie Tangri where his practice focuses on intellectual property litigation and on complex commercial cases with a high-technology component.

A broad spectrum of academics and industry lined up Friday to support Microsoft’s request for Supreme Court review of its ongoing patent litigation against i4i.  In the underlying litigation, i4i won a pile of money on a patent dealing with the idea of separately storing metacodes and text in a markup language document.    While the litigation has an interesting factual history, the issue on appeal is a purely legal one – namely the application of the “clear and convincing evidence” standard to questions of invalidity.

As most people reading this blog already know, in order to invalidate a patent, a defendant must prove that the patent is invalid by “clear and convincing” evidence.  Ostensibly, this rule exists in order to reflect deference to the fact that the patent has been examined and found valid by an expert at the Patent and Trademark Office.    See e.g. American Hoist & Derrick co. v. Sowa & Sons, Inc, 725 F.2d 1350 at 1359 (Fed. Cir. 1984) (taking note of “the deference that is due to a qualified government agency presumed to have properly done its job.”).

Especially when taken together, however, the amicus briefs in Microsoft v. i4i overwhelmingly show that this is an exceptionally bad rule – at least when applied (as it is now) to all questions of invalidity. Read the rest of this entry »

What is Prior Art?

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

Unfortunately there is no easy answer to the question of prior art, particularly for those who are new to the patent field. We can start off with the understanding that a particular reference or piece of knowledge will be considered to be prior art that must be overcome by a patent applicant if the patent examiner is legally allowed to use it against the applicant to reject one or more claims in a pending application. Likewise, a reference or piece of knowledge will be prior art if it can legally be used to invalidate one or more claims of an issued patent during litigation.

The trouble with explaining what prior art is stems from the fact that everyone already thinks they know what it is. Conceptually we do not want to issue patents for inventions that are not considered new, which seems fair enough. The trouble is defining what is “new.” For now, let’s just say that prior art must be a reference of some type (i.e., a patent or a printed publication) or some type of knowledge or event (i.e., public knowledge, public use or a sale of a product) that demonstrates that the invention in question is not new. Read the rest of this entry »

Reexamination Request against Wireless Game Controller Patent among those Filed Week of September 20th

Here is this week’s  installment of Reexamination Requests from Scott M. Daniels, of Reeaxamination Alert and Practice Center Contributor….

The most interesting reexamination request last week was filed against a patent that claims a radio frequency remote game controller and is owned by the Canadian company Eleven Engineering (Ex parte No. 22).  Last November Eleven Engineering and its U.S. subsidiary sued Nintendo, Sony and Microsoft for infringement of that patent and two others.  The accused games are Nintendo’s Wii Remote and Wii Balance Board, Sony’s Playstation3, and Microsoft’s Xbox 360.  The case is before Judge Stark in Delaware and has not progressed beyond the pleading stage.

Another notable request was filed by Volkswagen against a car brake safety patent (Inter partes No. 3).  The patent is owned by 55 Brake LLC who sued 12 major automobile companies for infringement of that patent.  The case is in Idaho and a trial is scheduled to begin in March 2011. Read the rest of this entry »