Category: Patent

by Dennis Crouch

The Federal Circuit recently affirmed a PTAB IPR decision invalidating claims of Masimo U.S. Patent RE47,218 (“the ’218 patent”) as obvious under 35 U.S.C. § 103. Masimo Corp. v. Sotera Wireless, Inc., 2022-1415 (Fed. Cir. Sept. 28, 2023) (nonprecedential). The Federal Circuit panel of Judges Prost, Wallach, and Chen determined (1) the Board correctly construed the disputed claim terms and (2) its obviousness ruling was supported by substantial evidence.  Id. (authored by Judge Wallach).

The case is yet another example of a patentee’s broad claim language and attempts to avoid limitations coming back to bite during IPR proceedings.  Unlike a decade ago, patent prosecutors are operating in today’s AIA world where IPR challenges have become commonplace.  The old model of broad-as-possible clearly has deficiencies.  To withstand post-issuance validity challenges, prosecutors should carefully craft claims early on with an eye toward narrower scope and avoiding abstraction even if you are doing enough to satisfy the USPTO on 112 and 101. Prosecutors can take full advantage of the 20 ‘free’ claims to pursue both broad and narrow protection. In the case here, the patent owner may have benefited from prosecuting more specific claims early on, as the disclosure arguably supported narrower alternatives that an IPR petitioner would have struggled to knock out.

Continue reading Broad Claims Bite Back: Drafting Narrower Scope in the Age of IPR at Patently-O.

by Dennis Crouch

The Federal Circuit recently affirmed a PTAB IPR decision invalidating claims of Masimo U.S. Patent RE47,218 (“the ’218 patent”) as obvious under 35 U.S.C. § 103. Masimo Corp. v. Sotera Wireless, Inc., 2022-1415 (Fed. Cir. Sept. 28, 2023) (nonprecedential). The Federal Circuit panel of Judges Prost, Wallach, and Chen determined (1) the Board correctly construed the disputed claim terms and (2) its obviousness ruling was supported by substantial evidence.  Id. (authored by Judge Wallach).

The case is yet another example of a patentee’s broad claim language and attempts to avoid limitations coming back to bite during IPR proceedings.  Unlike a decade ago, patent prosecutors are operating in today’s AIA world where IPR challenges have become commonplace.  The old model of broad-as-possible clearly has deficiencies.  To withstand post-issuance validity challenges, prosecutors should carefully craft claims early on with an eye toward narrower scope and avoiding abstraction even if you are doing enough to satisfy the USPTO on 112 and 101. Prosecutors can take full advantage of the 20 ‘free’ claims to pursue both broad and narrow protection. In the case here, the patent owner may have benefited from prosecuting more specific claims early on, as the disclosure arguably supported narrower alternatives that an IPR petitioner would have struggled to knock out.

Continue reading Broad Claims Bite Back: Drafting Narrower Scope in the Age of IPR at Patently-O.

by Dennis Crouch

The U.S. Patent and Trademark Office (USPTO), International Trade Administration (ITA), and National Institute of Standards and Technology (NIST) have extended the deadline for public comments on their request for information on standards and intellectual property. The new deadline is November 6, 2023.

On September 11, 2023, the three agencies jointly published a request for comments in the Federal Register seeking input from stakeholders on issues related to standards and intellectual property, especially as they impact small and medium enterprises in critical and emerging technologies.  This request complements a broader NIST request published on September 7, 2023 seeking comments on implementing the U.S. Government National Standards Strategy for Critical and Emerging Technologies. Both requests were originally due on October 11, 2023.

Specific topics of interest include:

• Participation of U.S. firms in international technical standards development
• Ability of U.S. companies to adopt technical standards to grow and compete globally
• Issues small and medium enterprises face regarding technical standards and intellectual property
• Fostering standardization of critical and emerging technologies
• Policies related to standard essential patents (SEPs)

Technical standards play a critical role in ensuring interoperability and have potential benefits of both enhancing competition and driving innovation.  

Continue reading Seeking Comment on Standards, SEPs, and Competitiveness at Patently-O.

by Dennis Crouch

The U.S. Patent and Trademark Office (USPTO), International Trade Administration (ITA), and National Institute of Standards and Technology (NIST) have extended the deadline for public comments on their request for information on standards and intellectual property. The new deadline is November 6, 2023.

On September 11, 2023, the three agencies jointly published a request for comments in the Federal Register seeking input from stakeholders on issues related to standards and intellectual property, especially as they impact small and medium enterprises in critical and emerging technologies.  This request complements a broader NIST request published on September 7, 2023 seeking comments on implementing the U.S. Government National Standards Strategy for Critical and Emerging Technologies. Both requests were originally due on October 11, 2023.

Specific topics of interest include:

• Participation of U.S. firms in international technical standards development
• Ability of U.S. companies to adopt technical standards to grow and compete globally
• Issues small and medium enterprises face regarding technical standards and intellectual property
• Fostering standardization of critical and emerging technologies
• Policies related to standard essential patents (SEPs)

Technical standards play a critical role in ensuring interoperability and have potential benefits of both enhancing competition and driving innovation.  

Continue reading Seeking Comment on Standards, SEPs, and Competitiveness at Patently-O.

Guest post by: Dr. Paola Cecchi Dimeglio, Chair of the Executive Leadership Research Initiative for Women and Minorities Attorneys at Harvard Law School and Harvard Kennedy School

(This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here. – Jason)

Virtual reality, AI chatbots, and other emerging technologies are fueling a drive to innovate, improve, and patent new products and services that are inclusive from the beginning. This goal is not only morally right but also economically essential; inclusive innovation has become a multibillion-dollar necessity. However, engaging diverse inventors at large technology companies still presents layers of challenges.

In 2022, the USPTO reported a 32% growth in the number of U.S. counties where women patented over the 30-year span from 1990 to 2019; in 2019, over 20% of patents issued included at least one woman inventor; similar data is not available for minority inventors.

Perhaps more than at any time in their history, technology companies are under pressure to achieve patentable breakthroughs.

Continue reading Guest post by Dr. Dimeglio – An Invitation to Inclusive Innovation at Patently-O.

Guest post by: Dr. Paola Cecchi Dimeglio, Chair of the Executive Leadership Research Initiative for Women and Minorities Attorneys at Harvard Law School and Harvard Kennedy School

(This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here. – Jason)

Virtual reality, AI chatbots, and other emerging technologies are fueling a drive to innovate, improve, and patent new products and services that are inclusive from the beginning. This goal is not only morally right but also economically essential; inclusive innovation has become a multibillion-dollar necessity. However, engaging diverse inventors at large technology companies still presents layers of challenges.

In 2022, the USPTO reported a 32% growth in the number of U.S. counties where women patented over the 30-year span from 1990 to 2019; in 2019, over 20% of patents issued included at least one woman inventor; similar data is not available for minority inventors.

Perhaps more than at any time in their history, technology companies are under pressure to achieve patentable breakthroughs.

Continue reading Guest post by Dr. Dimeglio – An Invitation to Inclusive Innovation at Patently-O.

By: Jordana R. Goodman Assistant Professor at Chico-Kent College of Law

(This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here. – Jason)

According to the National Association for Law Placement, female equity partners in law firms comprised about 23% of the total equity partner population in the United States in 2022.  Women made up more than half of all summer associates and have done so since 2018.  Representation among intellectual property lawyers parallels this trend, with women representing about 22% of all equity partners and over 50% of all summer associates in 2019. Although there has been steady progress in hiring women attorneys at junior levels, there have not been similar increases in partner retention in the past thirty years.  NALP called the partner level increases “abysmal progress,” and suggested that one reason for this failure is that “little work has been done to examine and change the exclusionary practices that create inequalities.”

If presence was the only obstacle to creating a more diverse, equitable, and inclusive legal environment, the pipeline of diverse junior associates would have begun to significantly shift the partner demographics at law firms across the country. 

Continue reading Guest Post by Prof. Goodman – Unseen Contributors: Rethinking Attribution in Legal Practices for Equity and Inclusion at Patently-O.

by Dennis Crouch

In most patent cases, the parties jointly agree to a system limiting the publication of confidential case information and typically file a stipulated motion for protective order seeking the a judicial order requiring the parties to comply. One problem with this approach is that it goes against our traditional notion that courts and court filings are open and accessible to the public. The purpose of open court records is to promote transparency and accountability in the judicial system. Public access to court records allows the public (including journalists) to monitor the work of the courts and acts as a check on the judicial process. However, the public is not a party to the lawsuit and so typically is not asked for input on protective orders. Sealing records and holding proceedings behind closed doors undermines public confidence in the courts and can create a perception that courts or the parties may be engaged in undisclosed improper or illegal activities. While there are valid reasons to keep certain information confidential in some cases, such as protecting trade secrets or personal information, restricting public access should be approached carefully and narrowly to balance the interests of the parties with the public’s right to open courts.

Continue reading Emails Analyzing Own Patents Likely Not Trade Secrets at Patently-O.

by Dennis Crouch

In most patent cases, the parties jointly agree to a system limiting the publication of confidential case information and typically file a stipulated motion for protective order seeking the a judicial order requiring the parties to comply. One problem with this approach is that it goes against our traditional notion that courts and court filings are open and accessible to the public. The purpose of open court records is to promote transparency and accountability in the judicial system. Public access to court records allows the public (including journalists) to monitor the work of the courts and acts as a check on the judicial process. However, the public is not a party to the lawsuit and so typically is not asked for input on protective orders. Sealing records and holding proceedings behind closed doors undermines public confidence in the courts and can create a perception that courts or the parties may be engaged in undisclosed improper or illegal activities. While there are valid reasons to keep certain information confidential in some cases, such as protecting trade secrets or personal information, restricting public access should be approached carefully and narrowly to balance the interests of the parties with the public’s right to open courts.

Continue reading Emails Analyzing Own Patents Likely Not Trade Secrets at Patently-O.

by Dennis Crouch

The U.S. Court of Appeals for the Federal Circuit recently affirmed a finding by  Western District of Texas Judge Alan Albright that certain claims in two patents owned by WSOU Investments LLC were invalid as indefinite under 35 U.S.C. §112.  WSOU Invs., LLC v. Google LLC, Nos. 22-1066, -1067 (Fed. Cir. Sept. 25, 2023).  Although the decision is designated nonprecedential, it includes a number of interesting lessons on the requirements for definiteness and disclosure of corresponding structure under 35 U.S.C. §112.

The Technology at Issue

The first patent at issue was U.S. Patent No. 7,304,563 (“the ‘563 patent”), entitled “Alarm clock.” This patent claimed an alarm clock feature for mobile phones where the alarm involved initiating a connection to another device over a network to cause that device to signal the alarm.

Claim 16 is is recited in means-plus-function form:

issuing means for issuing an alert when the current time matches the alert time by initiating a connection to another communication terminal over a network so as to cause that other terminal to locally signal the incidence of the connection incoming thereto

‘563 Patent, claim 16.

Continue reading Federal Circuit Affirms Finding of Indefiniteness in Dispute Over Mobile Phone and Camera Patents at Patently-O.