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| start [2024/02/19 12:36] – len | start [2024/04/23 10:09] (current) – [Patents invalidated by Obviousness-Type Double Patenting (posted 01/23/24)] len |
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| ~~NOTOC~~ | ~~NOTOC~~ |
| ====== Patent News ====== | ====== Patent News ====== |
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| | ===== J. Albright reversed on basic claim construction principles (posted 03/07/24) ===== |
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| | Judge Albright of the western district of Texas has an overal decision reversal rate of 25%, which is much higher than the national average of 16%. In the area of claim construction, his claim construction orders are vacated or reversed more often than confirmed, with a vacate/reverse rate of 39.5% verses a 38.8% affirm ratio rate, with the remaining cases being settled or voluntarily dismissed.((DocketNavigator)) |
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| | <div box right round 480px> |
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| | **Claim 1.** A nonaqueous secondary battery comprising: |
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| | <div indent> |
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| | [a] a positive electrode . . . [b] wherein . . . the lithium-containing transition metal oxide having the smallest average particle size is a lithium-containing transition metal oxide represented by the formula (1): Li<sub>x</sub>M<sup>1</sup><sub>y</sub>M<sup>2</sup><sub>z</sub>M<sup>3</sup><sub>v</sub>O<sub>2</sub> |
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| | [c] **//wherein M<sup>1</sup> represents at least one transition metal element selected from Co, Ni |
| | and Mn,//** . . . ; |
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| | [. . .] |
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| | [f] **//wherein the content of Co in the transition metal M1 of the formulae (1) and (2) is |
| | from 30% by mole to 100% by mole,//** |
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| | </div></div> |
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| | In **//{{ :legal:construction:maxell_23-1194.pdf |Maxell, Ltd. v. Amperex Technology Ltd}}//**, the Fed. Cir.'s latest reversal of {{ :legal:construction:maxell_wdtx-6-21-cv-00347-156.pdf |a claim construction out of Albright's court}}, the Federal Circuit rejected Albright's reasoning that the claims were indefinite because they recite a contradiction. Specifically, the district court stated that "[t]he first part of the claim recites a Markush group where [cobalt] is not necessarily required to be in the claimed compound while the second part of the claim recites that [cobalt] is necessarily required. For an element to simultaneously be optional and required is a contradiction on its face." |
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| | The Federal Court, however could find no contradiction in the claim. Stated the court: "**It is perfectly possible for a transition metal element to meet both requirements. The two limitations are therefore not contradictory.**" |
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| | The court continues (internal citations omitted): |
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| | <div indent> |
| | >[A] reader seeking to understand “the scope of the invention,” is charged with knowing not only that any particular claim language must be “read in the context of the full claim,” but also that “all limitations of a claim must be considered in deciding what invention is defined,” In this context, as in other legal-interpretation settings, later text must be read along with earlier text to discern the meaning. |
| | >[. . .] |
| | >The district court’s explanation for its contrary conclusion repeatedly describes limitation [c] as granting “options” as to the makeup of M1—seemingly in the sense of a grant of right to others—which limitation [f] then takes back. But this description is inapt, even aside from its treatment of the limitations in isolation from each other. Claim limitations do not grant options. They state requirements—conditions that must be met for a product or process (as the case may be) to come within the claim’s protected zone of exclusivity. If there are two requirements, and it is possible to meet both, there is no contradiction. |
| | </div> |
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| | * [[jds>legalnews/inelegant-language-does-not-an-8606123/|Summary]] |
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| | ===== Fed. Cir. holds claims to targeted advertising as ineligible (posted 03/07/24} ===== |
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| | <div box right round 480px> |
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| | **Claim 1.** A method of targeting at least one associated advertisement from an Internet search [. . .], comprising: |
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| | <div indent> |
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| | identifying at least one search result item [. . .]; |
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| | searching for said at least one associated advertisement within said repository using said at least one search result item; |
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| | identifying said at least one associated advertisement from said repository [. . .]; and |
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| | correlating said at least one associated advertisement with said at least one search result item. |
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| | </div> |
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| | **Claim 5.** The method of claim 1 further comprising: designating said at least one search result item matched to said at least one associated advertisement for subsequent selection by a user. |
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| | **Claim 13.** The method of claim 5 further comprising //performing an off-line batch process for each of said at least one search result item, wherein said batch process identifies said at least one associated advertisement for said at least one search result item.// |
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| | </div> |
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| | In //{{ :legal:statutory_subject_matter:chewy_22-1756.pdf |Chewy v. IBM Corp.}}//, the Federal Circuit upheld a determination that claims of [[gp>US7076443|U.S. patent 7,076,443]] as being ineligible as being drawn to abstract subject matter. The court agreed with the lower court Summary Judgment which concluded that at, //Alice// step one, the asserted claims are directed to the abstract idea of identifying advertisements based on search results, and rejected IBM's argument that the claims are instead directed to a patent-eligible improvement in online advertising: obtaining search results from a user’s search query and using those search results to identify targeted advertisements. |
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| | State the court: "Unlike the claims in //Packet Intelligence,// ((Packet Intelligence LLC v. NetScout Systems, Inc., 965 F.3d 1299 (Fed. Cir. 2020) )) the ’443 patent claims are not directed to any challenges unique to computer networks, or specific improvements to the functionality of the computer itself. The claims merely recite the concept of identifying advertisements based on search results, without any specificity as to how this is accomplished. Even accepting that the claimed invention improves the specificity and relevancy of online advertisements, this “is at most an improvement to the abstract concept of targeted advertising wherein a computer is merely used as a tool.” Customedia, 951 F.3d at 1365." |
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| | With respect to //Alice// step 2, the court rejected IBM's arguments that (1) claims 13 and 15 recite an inventive repository configured to associate search results with advertisements, (2) claim 13 recites using offline batch processing in an unconventional way, and (3) claim 16 recites refining the targeting criteria by assigning session identifiers when the user enters a search query. The court concluded that "none of these claim elements, individually or as an ordered combination, constitute an inventive concept sufficient to transform the claimed abstract idea of identifying advertisements based on search results into patent-eligible subject matter." |
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| | With respect to claim 13, the court held as follows (internal citations omitted): |
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| | <div indent> |
| | > It is undisputed off-line batch processing was conventional at the time of invention. The ’443 patent does not suggest the claimed invention uses off-line batch processing in an unconventional manner. The claimed invention uses conventional off-line batch processing to more efficiently implement the abstract idea of identifying advertisements based on search results. This is insufficient to transform claim 13 into patent-eligible subject matter. We have repeatedly held "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept." |
| | </div> |
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| | * [[lex>library/detail.aspx?g=7fd636d5-c138-48fb-a131-9caeec77cb17|Summary]] |
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| ===== Federal Circuit reverses PTAB's holding that each claimed item in a list is necessarily distinct (posted 02/19/24) ===== | ===== Federal Circuit reverses PTAB's holding that each claimed item in a list is necessarily distinct (posted 02/19/24) ===== |
| </div> | </div> |
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| EcoFactor has 14 pending matters before the Federal Circuit, the Northern District of California, and the District of Orgeon asserting one of several patents related to intelligent HVAC control systems. | EcoFactor has asserted [[gp>US8498753|Patent 8,498,753]] related to intelligent HVAC control against Google and Ecobee in separate proceedings. Google and Ecobee submitted separate IPR petitions seeking to invalidate the patent. On February 7, 2024, the Federal Circuit, in a precedential decision styled //{{ :legal:construction:google_22-1750.pdf |Google LLC, Ecobee, Inc. v. EcoFactor, Inc.}}//, reversed PTAB on an implied claim construction. While the PTAB stated that they did not construe the claim because it was unnecessary to do so in order to rule in favor of EcoFactor, the Federal Circuit found both that the PTAB did, in fact, construe the claim, and further, that its construction was "erroneous." |
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| On February 7, 2024, the Federal Circuit, in a precedential decision styled //Google LLC, Ecobee, Inc. v. EcoFactor, Inc.//, reversed PTAB on a claim construction for a patent claim directed to determining an appropriate time to control an HVAC system in order to reach a target temperature at a specified time. The PTAB stated that they did not construe the claim because it was unnecessary to do so in order to rule in favor of EcoFactor because limitation 1m requires 5 separate distinct inputs and Google only identified 4 inputs in the prior art. In its reversal, the Federal Circuit found both that the PTAB did, in fact, construe the claim, and further, that its construction was "erroneous." | |
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| **Stated the court (internal citations removed, emphasis in original):** | **Stated the court (internal citations removed, emphasis in original):** |
| The Federal Circuit rejected Cellect’s attempt to argue that ODP should not apply to patent term adjustments under 35 U.S.C. § 154(b)(2)(B) for the same reason that they don't apply to patent term extensions under 35 U.S.C. § 156. ((35 U.S.C. § 156 allows an applicant/patentee to extend a patent that covers a product whose market introduction is deleted due to the FDA approval process.)) The Court also addressed Cellect's other arguments and rejected each in turn, finding that the patents are invalid under obviousness-type double patenting and therefore unenforceable. | The Federal Circuit rejected Cellect’s attempt to argue that ODP should not apply to patent term adjustments under 35 U.S.C. § 154(b)(2)(B) for the same reason that they don't apply to patent term extensions under 35 U.S.C. § 156. ((35 U.S.C. § 156 allows an applicant/patentee to extend a patent that covers a product whose market introduction is deleted due to the FDA approval process.)) The Court also addressed Cellect's other arguments and rejected each in turn, finding that the patents are invalid under obviousness-type double patenting and therefore unenforceable. |
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| :!: **UPDATE:** ON November 13, 2023, Cellect filed a petition for //en banc// rehearing, which has attracted several amici briefs, which raise some interesting points. | On November 13, 2023, Cellect filed a petition for //en banc// rehearing, which has attracted several amici briefs, which raise some interesting points. On January 19, 2024, the request for rehearing was {{ :legal:double_patenting:cellect_en_banc_denial.pdf |denied}}. |
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| * [[po>patent/2023/11/adjustment-rehearing-patenting.html|Summary, analysis, and comments]] | * [[po>patent/2023/11/adjustment-rehearing-patenting.html|Summary, analysis, and comments]] |
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| * [[lex>library/detail.aspx?g=5e0577b2-c37d-4b6b-9e72-133bcfda0c12|Summary and analysis]] 8-) | * [[lex>library/detail.aspx?g=5e0577b2-c37d-4b6b-9e72-133bcfda0c12|Summary and analysis]] 8-) |
| * [[akin>https://www.akingump.com/en/insights/blogs/ip-newsflash/in-wake-of-in-re-cellect-district-court-interprets-safe-harbor-statute-and-finds-patent-not-invalid-for-obviousness-type-double-patenting|Discussion of Allergan]]. | |
| * [[fr>insights/thought-leadership/blogs/district-of-delaware-finds-allergan-patents-invalid-for-lack-of-written-description-and-obviousness-type-double-patenting-in-allergan-v-msn-labs/|Discussion of Allergan vis a vis Cellect]] | * [[fr>insights/thought-leadership/blogs/district-of-delaware-finds-allergan-patents-invalid-for-lack-of-written-description-and-obviousness-type-double-patenting-in-allergan-v-msn-labs/|Discussion of Allergan vis a vis Cellect]] |
| | * [[fcb>2023/06/19/argument-recap-in-re-cellect-llc-cellect-ii/|Summary of arguments]] 8-) |
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