Patent News:

In Helmsderfer and Brocar Products, Inc. v. Bobrick Washroom Equip. Inc. et al., the Fed. Cir. upheld the Southern District of Ohio's ruling that “partially hidden” should be narrowly construed, i.e., as excluding “totally hidden.” Stated the court: “It is true that the plain meaning of 'partially hidden from view' does not include totally hidden from view, and that therefore claims 6-7 [which depend from claim 1 at right] do not cover the preferred embodiment or the other illustrated embodiments.” The fact that this construction “excludes both the preferred embodiment and every illustrated embodiment from these particular claims” is addressed by distinguishing Primos Inc. v. Hunter’s Specialties Inc. 1), which “counsels against interpreting a claim term in a way that excludes the preferred embodiment from the scope of the invention.” Primos and related cases are distinguished primarily on the basis that they prohibit “interpreting a claim term in a way that excludes disclosed embodiments, when that term has multiple ordinary meanings consistent with the intrinsic record” (emphasis added). Here, however, “Brocar’s proposed construction is not consistent with any plain meaning of the term “partially” as interpreted in light of the specification.”

• Patent in suit
• Summary, comments, discussion
• Comment and excerpts
• Summary with excerpts

The USPTO published new rules for appeal practice before the BPAI today. Although no announcement of the new rules was made on PTO's home web site, there have been lots of noise on the 'net.

• Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals
• Summary, commentary
• Summary, commentary
• Brief summary
• Summary of rules, discussion

The Supreme Court reversed the Fed. Cir., in Quanta Computer Inc., et al. v. LG Electronics, Inc. For a complete background to this case, refer to the LG v Quanta page. The following summarizes the Court's findings:

Legal principle: “The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item.”

1. On whether the Intel Products are “patented,” i.e., embody the patented inventions:
   • “Nothing in this Court's approach to patent exhaustion supports LGE's argument that method patents cannot be exhausted. . . . [M]ethods . . . may be 'embodied' in a product, the sale of which exhausts patent rights.”
   • Quoting Univis: ”[T]he authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold.”
   • “Here, as in Univis, the incomplete article substantially embodies the patent because the only step necessary to practice the patent is the application of common processes or the addition of standard parts.”
2. On applicability of Univis: “In each case, the final step to practice the patent is common and noninventive: grinding a lens to the customer's prescription, or connecting a microprocessor or chipset to buses or memory. The Intel Products embody the essential features of the LGE Patents because they carry out all the inventive processes when combined, according to their design, with standard components.”
3. On relevance of secondary patents: “a device that practices patent A does not, by virtue of practicing patent A, exhaust patent B. But if the device practices patent A while substantially embodying patent B, its relationship to patent A does not prevent exhaustion of patent B.”
4. On what constitutes “an authorized sale,” the Supreme Court distinguished General Talking Pictures Corp. v. Western Elec. Co. 2): “The License Agreement authorized Intel to sell products that practiced the LGE Patents. No conditions limited Intel's authority to sell products substantially embodying the patents. Because Intel was authorized to sell its products to Quanta, the doctrine of patent exhaustion prevents LGE from further asserting its patent rights with respect to the patents substantially embodied by those products.”
5. DICTA: “We note that the authorized nature of the sale to Quanta does not necessarily limit LGE's other contract rights. LGE's complaint does not include a breach-of-contract claim, and we express no opinion on whether contract damages might be available even though exhaustion operates to eliminate patent damages. See Keeler v. Standard Folding Bed Co., 3) ('Whether a patentee may protect himself and his assignees by special contracts brought home to the purchasers is not a question before us, and upon which we express no opinion. It is, however, obvious that such a question would arise as a question of contract, and not as under the inherent meaning and effect of the patent laws.').”

• Supreme Court Decision (Cached copy) (Paper-saver version)
• Summary, excerpts, discussion
• Summary, excerpts
• Summary
• Kevin Noonan's analysis, impact on bio-tech patents
• Excerpts, commentary
• Comments only
• Analysis

In anticipation of the forthcoming Ex parte Bilski decision, a comprehensive page directed to Ex parte Bilski has been set up here.

An enigmatic organization calling itself “The Institute for Progress” produced a report entitled “Reexamining Inter partes Reexam”. The study is based on data from the PTO's PAIR system and is notable for calling out the PTO's own statistics as misleading, particularly the pendency statistics. The following findings were highlighted:

• Inter partes reexam (IPRE) requests have been increasing rapidly. In 2007, there were over 140, roughly six times more than in 2003, when there were fewer than 30 requests filed.
• More than half of the patents in IPRE proceedings are known to be in litigation during their reexamination, showing that IPRE is not seen as an alternative to litigation as envisioned, but an augmentation of litigation.
• Virtually all IPRE requests are granted.
• Only three IPRE cases have received a decision by the BPAI, and none have gone through the entire IPRE process. Without appeal, the average pendency period for IPRE is 43.5 months, much longer than the 28.5 months reported by the PTO, which is based on only 12 IPREs that had reached a final certificate by that date, and many of these skipped steps due to failure of the patent holder to respond. A 95% confidence interval would put the pendency between 34 and 53 months. The average pendency for appealed IPREs is 78.4 months, assuming no reqork by the PTO or secondary appeal.

Hal Wegner's take:

“The 'Rivette Reexamination Report' is an explosive condemnation of the PTO’s track record on inter partes reexamination for two reasons. First, the meticulous and intricate detail set forth in the report and the sub silentio confirmation by the PTO of its accuracy give this report tremendous credibility. Second, the study is authored by Fellows of an Institute that includes Kevin Rivette, who chair’s the PTO’s own advisory board. This is thus a mainstream study by the very Chair of the PTO’s own advisory board, hand picked by the Director of the PTO himself.”

• Summary, links to report and data
• Summary of study, links to the study

In Ex parte Fu (cached copy) the BPAI upheld the rejection of a claim to an electrophotographic device having a chemical surfactant of a particular formulation. The prior art did not disclose the claimed species of chemical surfactant, but did teach a genus of which the surfactant is a species. The question presented was the correctness of the Examiner's conclusion that the claimed species was obvious over the prior art genus. The Applicant relied principally on In re Baird, 4), stating that the prior art lacked motivation to select the specifically recited surfactant and that the Examiner applied an improper “obvious to try” rationale so support the obviousness rejection. Relying on KSR 5) and Merck & Co., Inc. v. Biocraft Labs, Inc., 6), the BPAI disagreed, stating: “While Yamamoto's genus of surfactants is arguably broad, it nevertheless consists of only a finite number of known perfluoroalkyl surfactants that predictably solve the dispersion problem…. Accordingly, a person having ordinary skill in the art would have had 'good reason to pursue' the use of GF-300, the claimed surfactant species. It would have been within the 'technical grasp' of that person having ordinary skill in the art to understand that this known surfactant, which was readily available in commerce, has the perfluoroalkyl group as required by Yamamoto. Because that person having ordinary skill in the art would have “anticipated success” in trying GF-300 perfluoroalkyl surfactant in view of Yamamoto's teachings, the subject matter of appealed claim 1 would have been prima facie obvious over Yamamoto alone.”

In Aristocrat v. IGT, the Fed. Cir. held that the trial court committed no reversible error in its summary judgment that all claims of Aristocrat's patent are invalid under 35 U.S.C. §112, sixth paragraph. Specifically, the trial court held that the patent lacked sufficient structure to support claim limitations for “game control means.” The court stated “there was no adequate disclosure of structure in the specification to perform” the functions performed by the game control means. Stated the court (citing WMS Gaming, 184 F.3d at 1348): in a means-plus-function claim “in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” Furthermore, “language [that] simply describes the function to be performed, [is] not the algorithm by which it is performed.” It is insufficient and contrary to Fed. Cir. precedent that an algorithm to perform that function is within the capability of one of skill in the art.

• Patent in suit: 6,093,102
• Summary, excerpts, discussion
• Summary, discussion