Patent Law Practice Center

Nintendo Prevails at ITC in Wii Case

On Sept. 12, 2013, Nintendo won a patent infringement case brought at the International Trade Commission by Creative Kingdoms. The commission found that Nintendo’s Wii and Wii U systems do not infringe Creative Kingdoms’ patents. The commission also found that Creative Kingdoms’ patents are invalid.

On April 27, 2011, the Commission instituted the investigation based on a complaint filed by Creative Kingdoms, LLC of Wakefield, Rhode Island and New Kingdoms, LLC of Nehalem, Oregon. The complaint alleged violations of Section 337 by reason of infringement of certain claims of U.S. Patent Nos. 7,500,917 (“the ‘917 patent”), 7,896,742 (“the ‘742 patent”), 7,850,527 (“the ‘527 patent”), and 6,761,637 (the ‘637 patent). The ‘637 patent was subsequently terminated from the investigation. On August 31, 2012, the ALJ issued a final Initial Determination (ID) finding no violation of section 337 by Nintendo.

The ALJ found that the accused products infringe sole asserted claim 24 of the ‘742 patent, but that the claim is invalid for failing to satisfy the enablement requirement and the written description requirement under 35 U.S.C. § 112. The ALJ found that no accused products infringe the asserted claims of the ‘917 patent and the ‘527 patent. The ALJ also found that the asserted claims of the ‘917 and ‘527 patents are invalid for failing to satisfy the enablement requirement and the written description requirement. The ALJ concluded that complainant has failed to show that a domestic industry exists in the United States that exploits the asserted patents as required by 19 U.S.C. § 1337(a)(2). The ALJ did not make a finding regarding the technical prong of the domestic industry requirement with respect to the asserted patents. The ALJ also did not making a finding with respect to anticipation and obviousness of the asserted patents.

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Advanced Patent Prosecution Workshop: Claim Drafting & Amendment Writing

Yesterday, I attended PLI’s Advanced Patent Prosecution Workshop 2011 in New York where an esteemed panel of experts offered hands-on claim drafting and amendment writing techniques.  The program was organized into four technological sections: Biotechnology, Chemical/Pharmaceutical, Electrochemical and Electronics/Computers. I attended the Chemical/Pharmaceutical segment whereJohn Todaro of Merck & Co. discussed advanced issues in drafting of patent specifications.

Here are some highlights from his presentation….

-Draft the claims or Summary of the Invention first, because of the primary role of the patent specification in claim construction

-General Considerations in Drafting the Specification:

1. Distinguish invention from the prior art
2. Define claim terms
3. Provide broadest possible claim scope, while complying with section112 requirements
4. Consider ex-US patent law issues

–Control the length of the application – too long = excess fees. Cost issue is important, think about when drafting the application. (more…)

Patent Drafting: Defining Computer Implemented Processes

The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.

The United States Patent and Trademark Office is radically updating the Patent Bar Examination starting in April 2011.  Since I teach the PLI Patent Bar Review Course that has required John White and I to revise our materials.  One of the new things tested will be the recently released 112 Guidelines, which are full of great information and explanation, particularly relating to computer implemented processes; what many would call software.  Being the “software guy” one of my responsibilities has been to work on the 112 Guidelines and the Bilski Guidelines for the PLI course.  So I thought I would take this opportunity to write, once again, about how to disclose computer implemented inventions to satisfy the disclosure requirements, which are embodied specifically in 35 U.S.C. § 112.

The statutory requirements for computer-implemented inventions are the same as for all inventions.  That means that in order to be patentable the invention must meet the patent eligibility test in 35 U.S.C. § 101, the invention must be new (§ 102), it must be non-obvious (§ 103) and it must be adequately described (§ 112).  Since the United States Supreme Court announced its decision in Bilski v. Kappos, the United States Patent and Trademark Office has continually urged patent examiners to get beyond the § 101 inquiry except in extreme cases.  Prior to the Supreme Court’s Bilski decision many examiners would simply see a computer-implemented method and issue a blanket and rather non-specific rejection asserting that the invention was not patent eligible subject matter under § 101.  The USPTO focus on getting past § 101 and to the meat of the invention means that such rejections are no longer the norm.  It also means that the Patent Office is pushing the real question about whether an patentable invention is presented into the adequate description space pursuant to § 112.  Thus, a thorough and complete description is absolutely essential when your invention relates to a computer-implemented method, whether it is software, an Internet processes or a business method. (more…)

Federal Circuit: Foreign Application Not Priority in Interference When it Only “Envisions” Invention

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

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass.  The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application.  The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count.  If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

Goeddel was a consolidated appeal from two decisions of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office in two related patent interference priority contests between the party Haruo Sugano, Masami Muramatsu, and Tadatsugu Taniguchi (together “Sugano”) and the party David V. Goeddel and Roberto Crea (together “Goeddel”).  The Board held that Sugano is entitled to the benefit of the filing date of its initial Japanese application, and awarded Sugano priority as to the counts of both interferences. (more…)

Written Description Requirement: Ariad v. Eli Lilly

I recently had the opportunity to listen in on PLI’s one hour briefing titled Ariad v. Eli Lilly and the Separate Written Description Requirement. This briefing was conducted by Vera M. Elson, a partner in the international law firm McDermott Will & Emery and Burt Magen, a partner in the law firm Vierra Magen Marcus & DeNiro LLP.  Ms. Elson focuses her practice on intellectual property trial and counseling for her firm’s technology clients.  Mr. Magen focuses his practice on intellectual property counseling and patent prosecution for his firm’s technology clients.

Elson began by explaining that pre-Ariad § 112, ¶1 focused on two underlying purposes behind a separate written description.  The first was Possession:  “The purpose of the written description requirement is broader than to merely explain how to make and use; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar, 935 F. 2d 1555 (Fed. Cir. 1991).  In other words, what you claimed you actually invented.  The second was Meaningful Disclosure: “A patent specification must convey the detailed identity of an invention, thereby serving a teaching function as a quid pro quo in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time. Univ. of Rochester v. G.D. Searle & Co., Inc. 358 F. 3d 916, 921 (Fed. Cir. 2004).  That is to say, you actually invented what you say you invented and you taught it to us.  But, everything came to a head with the Ariad case. (more…)