§ 287(a): “[. . .] In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”
In Lighting Defense Group LLC v. Shanghai Sensi Electronic Engineering Co. Ltd. et al. 1), the failure of a licensed third party to mark products as patented triggered 35 U.S.C. § 287. LDG licensed its patent in May of 2020 and argued that opposing party SANSI was liable for infringement prior to that date.
Stated the court:
Generally, a patentee who never makes ore sells a patented article does not trigger § 287's requirements. However, the federal Circuit has expounded, '[. . .] If, however, a patentee makes or sells a patented article and fails to mark in accordance with § 287, the patentee cannot collect damages until it either begins providing notice or sues the alleged infringer . . . and then only for the period after notification or suit has occurred.' SANSI asks the Court to join its sister court in holding that failure to comply with the marking requirements after attachment cuts off all pre-notice damages, not just those arising after, as consistent with Arctic Cat II. LDG asks the Court to reject those cases and follow Arendi's, where the Delaware district court concluded Arctic Cat II does not preclude recovery of damages for periods before the marking obligation attached.
[. . .]
Under a plain reading, § 287(a) precludes recovery after the requirement to mark is triggered until actual notice is given, after which that date then ccontrols the starting date for recovery. Although this is a harsh result, the plain language controls.
In 2024, the Federal Circuit issued eighteen opinions labeled “precedential” that were related to patent law. Quotations below omit citations and internal quotation marks. Here is a break-down:
Cytiva Bioprocess R&D AB v. JSR Corp.: Non-obviousness of novel compounds
Holdings:
Palo Alto Networks, Inc. v. Centripetal Networks, LLC et al.: Motivation to combine (Patent challenger appeals from unsuccessful IPR.)
Pfizer Inc. v. Sanofi Pasteur Inc.: Optimization of result-effective variables (Patent owner Pfizer challenges IPR holding of invalidity.)
Holdings:
Virtek Vision Internat'l ULC v. Assembly Guidance Systems, Inc.: Motivation (Patent owner Virtek and patent challenger Aligned Vision cross-appeals IPR findings of a subset of challenged claims invalid.)
Holdings:
Sanho Corp. v. Kaijet Tech. Int'l Ltd.: Excluding prior art under § 102(b)(2)(B) (Patent owner Sanho appeals invalidity finding by PTAB.)
35 U.S.C. § 102(b)(2): A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
Holdings:
Weber v. Provisur Tech.: Printed publication requirement. (Patent challenger Weber appeals PTAB holding that Provisur's patents were not invalid.)
Holdings:
LKQ Corp. v. GM Global Tech. Operations, LLC: Design Patent Nonobviousness (Patent challenger LKQ appeals PTAB decision upholding GM's design patent on a vehicle front fender.)
Holdings: “We conclude that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—are improperly rigid. The statutory rubric along with Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness.”
IOENGINE, LLC v. Ingenico Inc.: Printed matter doctrine (Fed. Cir. reversed PTAB's invalidation of claims related to portable data processing devices.)
Exemplary claim:
Claim 2: Code . . . configured to cause a communication to be transmitted to the . . . node
Claim 4: Wherein the communication caused to be transmitted to the . . . node facilitates transmission of encrypted communications from the . . . node to the terminal.”
Holdings:
Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc.: “For identifying a single biomolecule”
Claim 1. An apparatus for identifying a single biomolecule, comprising:
a substrate having a light detector; and
a linker site formed over the light detector, the linker site being treated to affix the biomolecule to the linker site;
wherein the linker site is proximate to the light detector and is spaced apart from the light detector by a distance of less than or equal to 100 micrometers.
Holdings:
RAI Strategic Holdings v. Philip Morris Products: Claimed ranges (Appeal by patent owner RAI of post-grant review finding invalidity.)
ZyXEL Communications v. Unm Rainforest Innovations: Motion to Amend [MTA] Pilot Program. (ZyXEL appeals PTAB's grant to UNMRI's motion to amend and finding claim 8 nonobvious; UNMRI cross-appeals on other findings.)
37 C.F.R. § 42.121(b): A motion to amend claims must include a claim listing . . . and set forth: (1) The support in the original disclosure of the patent for each claim that is added or amended; and (2) The support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.
SoftView LLC v. Apple Inc.: Estoppel (Patent owner SoftView appeals PTAB invalidation of all claims based on estoppel)
37 C.F.R. § 42.73(d)(3): A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.
Holdings:
Cywee Group Ltd. v. ZTE (USA), Inc.: Joint IPR petitioners (Patent owner Cywee appeals IPR decision holding original and proposed amended claims unpatentable.)
Holdings:
Koss Corp. v. Bose Corp.: Mootness/Issue Preclusion
Holdings:
Platinum Optics Tech. v. Viavi Solutions: Standing (Patent challenger PTOT appeals a final written decision from IPR.)
Holdings:
Speck v. Bates: Interference - (Junior party Speck appeals PTAB's decision awarding priority to Bates.)
37 C.F.R. § 135(b)(1): A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
Holdings:
Voice Tech v. Unified Patents: Appealing after Request for Rehearing (Patent owner Voice Tech appeals from PTAB finding all challenged claims obvious.)
Google LLC v. EcoFactor, Inc.: Claim construction and APA (Fed. Cir. vacated PTAB's claim construction.)
Pfizer Inc. v. Sanofi Pasteur Inc.: Director Review (Patent owner Pfizer challenges IPR holding of invalidity.)
In Vivint Inc. v. ADT LLC, the Federal Circuit upheld the PTAB's broad interpretation of the term, “predefined.” Claim 1 specifies, “detecting an entity entering a predefined area based at least in part on camera data.” The IPR panel, in finding that certain claims were anticipated and obvious, determined that “predefined” means “defined in advance” and that the “entire field-of-view of a camera” can be a “predefined area.” Stated the court:
Vivint contends that the Board erred by construing 'predefined area' to 'include whatever the camera sees.' It argues that such a broad construction renders 'entering a predefined area' superfluous. That is incorrect. A camera’s entire field-of-view does not automatically or necessarily correspond to a user’s region of interest. Instead, as the Board explained, 'the term “predefined area,” if applied to a camera’s entire field-of-view, would require the user to set up the camera such that the camera’s entire field-of-view would mark a perimeter [to enter] that corresponds to the user’s region of interest,' for example, by zooming in, panning out, or angling.
(Internal citations removed.)
In Palo Alto Networks, Inc. v. Centripetal Networks, LLC et al., the Federal Circuit vacated an IPR opinion for failing to make a finding as to whether there was motivation to combine the references under § 103.
The patent at issue is directed to a method for correlating computer network packets to detect propagation of potentially malicious network traffic. Claim 1 is focused on detecting the correlation and, “responsive to the correlating . . . transmitting . . . [an] indication of the first host.” Palo Alto Networks (PAN) asserts that two references, Paxton, which discloses correlating packets, and Sutton, which describes transmitting a notification related to a potential threat, are combinable under § 103 to arrive at the claimed invention. However, the PTAB panel concluded:
This leaves us with a correlation from Paxton with no specific actions taken post-correlation, and a transmission from Sutton unrelated to any correlation, but without the necessary bridge showing that one of ordinary skill in the art would have appreciated that the transmission would be responsive to the correlation. As such, Petitioner has not provided us with argument and evidence sufficient to establish by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Paxton, Sutton, and Ivershen.
The Federal Circuit held that:
Where, as here, the grounds for obviousness are based on a specific combination of references, arguments that “attack the disclosures of the two references individually” lack merit. Here, Paxton and Sutton must be read together, not in isolation.
[. . .]
the Board erred by not clearly explaining its holding or rationale regarding motivation to combine and whether the proposed combination teaches the final limitation of claim 1: transmitting an indication.” In fact, the parties disagreed as to whether the Board found motivation to combine, and the Court determined that the Board, “never made a clear finding on whether a person of ordinary skill in the art would have been motivated to modify Paxton by adding Sutton's step of transmitting a notification of malicious activity. [. . .] Relatedly, we cannot discern with any confidence what the Board meant when it said that it was left 'with a correlation from Paxton . . . , and a transmission from Sutton . . . , but without the necessary bridge.'. . . If the Board meant to say that it found no motivation to combine–and we do not know whether it did–it certainly failed to explain why a person of ordinary skill in the art would not have been motivated to modify Paxton to provide the recited notification as taught by Sutton in response to the correlation disclosed in Paxton.
(Emphasis added, citations removed.)
Time to bid a (fond?) farewell to the AFCP program at the Patent Office. IPWatchdog gives us a looking-back and a looking-ahead. Key takeaways include:
After today, applicants will need to revert to prior after-final practice, meaning that typically, only amendments that incorporate allowable subject matter into rejected independent claims (or convert allowable but objected-to dependent claims into independent claims) will be entered.
Christopher W. Quinn, of Quinn IP Law and also professor of IP innovation and strategy at the University of Michigan, posted a thoughtful article on how IP law is relevant, and some controversial reforms. A worthwhile read!
Findings: The claims are eligible because:
Findings: the claims are eligible because:
Dissent:
Rep. claim 7: A fitting method of a golf club, comprising. . . :
creating a hit ball result database . . . . by actual measurement and/or simulation;
measuring a subject's head speed dynamic loft, and blow angle using a reference club;
determining, by a processor, a suitable dynamic loft . . . as a dynamic loft achieving a predetermined hit ball result;
determining a dynamic loft difference from the suitable dynamic loft and the measured dynamic loft; and
determining a recommended loft angle based on a loft angle of the reference club and the dynamic loft difference;
Ex parte Kimizuka et al. 2018-001081
Findings (citations omitted): The claims are ineligible because:
Ex Parte Savescu et al. (PDF)
Findings: the claims are ineligible because:
Findings: The claims are eligible because:
Additional blurbs are accessible in categorized lists by accessing the Index link on the left (or, for small-format screens, below).