[Supreme Court] Nautilus v. BioSig

http://patentlyo.com/patent/2014/06/reasonable-certainty-regarding.html

Through a series of cases, the Federal Circuit has implemented was arguably a stiff test of indefiniteness – making it quite difficult to find a claim invalid as indefinite. As the Supreme Court writes:

According to the Federal Circuit, a patent claim passes the §112, ¶2 threshold so long as the claim is “amenable to construction,” and the claim, as construed, is not “insolubly ambiguous.”

In its opinion here, the Supreme Court found that the insolubly ambiguous fails to apply the statutory requirement noted above. In its place, the court has created a new test as follows:

A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention. . . . .

The standard we adopt accords with opinions of this Court stating that “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” Minerals Separation, Ltd. v. Hyde, 242 U. S. 261, 270 (1916). . . .

[Case law] Plaintiff’s Infringement Expert Disqualified Due to Prior Retention by Defendant

Case No. 2:13-CV-947-JRG-RSP

Memorandum Order

Rule)
As set out by the Fifth Circuit in Koch Refining Co. v. Boudreaux, 85 F.3d 1178, 1181
(5th Cir. 1996), in order to disqualify an expert witness, the moving party must show

- that it had an objectively reasonable basis for a confidential relationship with the expert, and

- that confidential information relevant to the instant case was disclosed to the expert during that prior
relationship.

Issue)
The real dispute centers around whether the prior work was relevant to the current case.

Fact)
On that point, the Court is heavily influenced by the fact that

- the parties agree that the same devices accused in this case were accused in the earlier matter.

- Furthermore, the time frames are nearly overlapping. Plaintiff has not been able to show that the issues do not also overlap.

- Furthermore, Defendant objected within days of learning of Bims’ involvement in this case and
was diligent in seeking disqualification.

- Finally, Plaintiff has not presented any statement from Bims explaining why his prior work is not relevant to the current case.

Conclusion)
Accordingly, the motion is GRANTED

[Link] English Language and Usage

http://english.stackexchange.com/

Rejections under 35 U.S.C. § 102 (template)

Rejections under 35 U.S.C. § 102

Claims 1-7

Claims 1-7 stand rejected under 35 U.S.C. § 102(b) as anticipated by [PA]. This rejection is respectfully traversed for the following reasons.

With respect to the Examiner's rejection, Applicant respectfully traverses the rejection on the basis that [PA] does not include all limitations as claimed.

/* Authority starts*/

MPEP § 2131 states that “‘[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently [See related post] described, in a single prior art reference.’ Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987)” (emphasis added). “‘The identical invention must be shown in as complete detail as is contained in the ... claim.’ Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989)” (emphasis added). Moreover, “[e]very element of the claimed invention must be literally present, arranged as in the claim.” Id. (emphasis added).

/* Authority ends*/

Therefore, to properly reject claims 1-7 under U.S.C. §102, the disclosure of [PA] must include each and every element and limitation as arranged therein.

Referring to the specification for the purposes of illustration only, embodiments of
the claimed invention relate to ". . . " See paragraphs [00**]-[00**] of the originally published specification.

Accordingly, independent claim 1 requires, in part, ". . . "

Meanwhile, [PA] discloses, in part, ". . . " See paragraph [0083] of [PA].

Applicant respectfully asserts that [PA] fails to disclose all of the limitations of
independent claim 1. Specifically, independent claim 1 requires, in part, ". . . "  [PA], however, is directed toward . . .   [PA] is silent with regard to . . . , as claimed, and is instead concerned with . . . ..

In view of the above, as [PA] fails to anticipate at least the aforementioned
limitation as required by independent claim 1, a rejection under § 102 cannot be supported. Thus,
independent claim 1 is patentable over [PA]. Independent claim 7 contains substantially similar
limitations and therefore is also patentable over [PA] for at least the same reasons. Dependent
claims are allowable for at least the same reasons. Accordingly, withdrawal of this rejection is
respectfully requested.

Conclusion
Applicant believes this reply is fully responsive to all outstanding issues and places this application  in condition for allowance.   If this  belief is incorrect, or other issues arise, the Examiner is encouraged to contact the undersigned or his associates at the telephone number listed
below.

Sites for English Learning

http://www.phrasemix.com/   (Very easy)

[Patently-O] Most Cited Supreme Court Patent Decisions (2005-2015)

http://patentlyo.com/patent/2015/03/supreme-court-cases.html

1. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness)
2. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (injunctive relief)
3. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (challenging licensed patents)
4. Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060 (2011) (inducing infringement)
5. Bilski v. Kappos, 561 U.S. 593 (2010) (subject matter eligibility)
6. Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238 (2011) (presumption of validity)
7. Illinois Tool Works Inc. v. Independent Ink, Inc., 547 U.S. 28 (2006) (tying)
8. Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008) (exhaustion)
9. Microsoft Corp. v. AT & T Corp., 550 U.S. 437 (2007) (infringement by export of components)
10. Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394 (2006) (post-verdict civil procedure requirements)
11. Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012) (patent eligibility)
12. Carlsbad Technology, Inc. v. HIF Bio, Inc., 556 U.S. 635 (2009) (appellate jurisdiction)
13. Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005) (research exception to infringement)
14. F.T.C. v. Actavis, Inc., 133 S.Ct. 2223 (2013) (competition law – drug settlements)
15. Gunn v. Minton, 133 S.Ct. 1059 (2013) (federal jurisdiction over cases involving patent law)
16. Lexmark Intern., Inc. v. Static Control Components, Inc., 134 S.Ct. 1377 (2014) (unfair competition based upon false infringement allegations)
17. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) (indefiniteness)
18. Already, LLC v. Nike, Inc., 133 S.Ct. 721 (2013) (standing after covenant not-to-sue)
19. Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 131 S.Ct. 2188 (2011) (ownership under Bayh-Dole)
20. Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) (subject matter eligibility)
21. Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S.Ct. 2347 (2014) (subject matter eligibility)
22. Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S.Ct. 2111 (2014) (divided infringement)
23. Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, 132 S.Ct. 1670 (2012) (forcing correction of Orange Book listings)

KSR has actually rocketed to the position of most-cited Supreme Court patent case of all time followed by Markman (1996); U.S. Gypsom (1948) (antitrust-patent); Graham v. Deere (1966); and Warner-Jenkinson (1997).

Litigation Databank

http://litigation.maxval-ip.com/

Litigation databank

[LTE] PDCCH, CCE

http://nitintayal-lte-tutorials.blogspot.com/2013/05/all-about-pdcch-and-cce-allocation.html

[CAFC] Preamble - limiting? PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC.

http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1396.Opinion.2-13-2015.1.PDF

"Just because an embodiment does not expressly disclose a feature does not mean that embodiment excludes that feature."

"However, in a case such as this, where the patent describes multiple embodiments, every claim does not need to cover every embodiment."

LTE standards

http://www.3gpp.org/technologies/keywords-acronyms/98-lte

http://www.etsi.org/technologies-clusters/technologies/mobile/long-term-evolution

http://www.whatsag.com/G/Understanding_LTE.php

file:///C:/Users/mp071953/Downloads/the-lte-standard.pdf

http://www.comsocscv.org/docs/Talk_111109_MobileBroadband.pdf

http://www.extremetech.com/mobile/110711-what-is-lte

http://www.unwiredinsight.com/2012/3gpp-lte-releases

http://lte-tdd.org/

http://www.radio-electronics.com/info/cellulartelecomms/lte-long-term-evolution/lte-fdd-tdd-duplex.php

SS10. Basic exercise

- If notice is delivered in person or by certified mail with return receipt request, notice will be effective.
--> Notice will be effective only if it is delivered in person or by certified mail, return receipt requested.

- The court should presume that the administrator's functions have ceased only when evidence proves it.
--> Without contrary proof, the court should presume that the administrator's functions continue.

- If the administrator reviews the application and finds that it contain all the requisite materials, termination will be approved.
--> Termination will be approved only after the administrator reviews the application and finds it complete.

SS 9. Basic exercise

1. The court relied heavily on the district court's statement that (1) the would-be intervenors retained the right to appear through counsel, to participate in the fairness hearing, to conduct discovery, and (2) they had standing to appeal the court's approval or disapproval of the class-action settlement.

2. the identify of the parties

3. (1) is ongoing, (2) implicates ... , (3) affords

717 Madison Place Oral Arguments and the Federal Circuit

http://www.717madisonplace.com/

Free and low cost Patent Analysis Tool

http://ipassetmaximizerblog.com/free-and-low-cost-patent-search-and-analysis-tools-who-needs-expensive-name-brand-products/

http://thepatentanalyst.com/page/3/

http://www.intellogist.com/wiki/Main_Page

Citestack for Chrome

http://www.citestack.com/index.html

How to: 20 features you’ve never used in Word

http://www.pcauthority.com.au/Feature/374631,how-to-20-features-you8217ve-never-used-in-word.aspx

True.

ss 8, writing exercise

- The plaintiff testified and so did three witnesses on behalf of the corporation.
Answer) After the plaintiff testified, three witnesses testified for the corporation.

-  The court should decide this purely legal question.
Answer) The court decides this purely legal question.

- The court should deny M's motion ...
Answer) The court should deny McCormick’s motion for partial summary judgment on the duty to defend.

- The court may disregard plaintiff's opposition because it violates ...
Answer)  The court should disregard Thompson’s opposition because it violates California Rule of Court 313.

IN RE CUOZZO SPEED TECHNOLOGIES, LLC

http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1301.Opinion.2-2-2015.1.PDF

Contrary to Cuozzo’s contention, we hold that we lack jurisdiction to review the PTO’s decision to institute IPR. We affirm the Board’s final determination, finding no error in the Board’s claim construction under the broadest reasonable interpretation standard, the Board’s obviousness determination, and the Board’s denial of Cuozzo’s motion to amend.

ss7 writing exercise

1. 1.      Ms. L… accrued considerable debt to her family and others, during her struggle to provide for her children as a single parent.

---> While struggling as a single parent to provide for her children, Ms. L… accrued considerable debt to her family and others.

1. 2.      Chesapeake incorrectly asserts that it is not a proper defendant in this case, and, therefore, that relief cannot be granted.

---> Chesapeake incorrectly asserts that it is not a proper defendant in this case, and that therefore relief cannot be granted.

1. 3.      The court ruled that Office McGee’s primary role is not law enforcement because he was acting more as a school employee than as a police officer.
2. --> Finding that Officer McGee was acting more as a school employee than as a police officer in searching Robinson, the court ruled that an official's primary role is not law enforcement.

P.21 ss6 writing exercise

1.  Appellee Allied Indemnity of New York respectfully suggests that oral argument should not be allowed because the Texas Supreme Court (in National Union case) and this Court (in Constitution State case) decided dispositive issue.

Also, the briefs and record adequately present the facts and legal arguments.

Oral argument would not significantly aid the decisional process.

--> Oral argument would be of little benefit for two reasons.  First, the dispositive issue has recently been decided by the Texas Supreme Court ( ) and by this Court ( ). Second, the facts and legal arguments are adequately presented in the briefs and the record.

2.  No Kansas cases explicitly held that a corporation is required to have a valid business purpose to engage in certain transactions like mergers, consolidations, or a sale of assets followed by a dissolution and liquidation.  But, in a 1994 case involving a cash-out merger where the dissenters claimed the defendant's board of directors breached its fiduciary duties to the dissenters, the Supreme Court of Kansas cited as one of the trial court's holdings that a corporation does not need to show a valid corporate purpose of eliminating stockholders.  (88 words)

Answer) No Kansas cases explicitly hold that Kansas requires a corporation to have a valid business purpose to engage in certain specified transactions.  But in 1994 the Supreme Court of Kansas decided a case that bears on the question.  The case involved a cash-out merger in which the dissenters claimed that the defendant's board of directors breached its fiduciary duties to them.  The court found that a corporation need not show a valid corporate purpose of eliminating stockholders.

3.  The court of appeals noted that the EPA had issued a permit for the applicant to discharge wastewater that would occur from the outfall pipe.  Holders of the permit are generally exempted from complying with the EIS requirement.  Accordingly, the Corps, a holder of the permit, did not need to analyze the environmental implications of the discharges from the outfall pipe and instead considered only the construction and maintenance of the pipeline itself.  The court held that the issuance of the permit is not a major federal action.   

--> The court of appeals cited two salient points.

P.18 writing exercise. ss5

1. Even if the fog caused injury to Roelke, Amskills had no duty to prevent the injury that Amskills could not have been expected to foresee.

--> Even assuming that the fog caused Roelke's accident, Amskills had no duty to prevent such a freakish and unforeseeable injury.

2.  Before the initial offering, the underwriters, any officers, directors, or employees did not know any facts suggesting that "Palm Harbor" could not be completed on schedule and in accordance with specifications.

--> Before the initial offering, no one knew or had reason to know that Palm Harbor could not be timely completed in accordance with specifications.

3.  Beale failed to allege facts to establish that competition among the nation's law schools would be reduced or that the public has been in any way injured. Thus, her restraint-of-trade claim would be dismissed.

--> Beale has not alleged facts that, if true, would establish either public injury or reduced competition among the nation's law schools.  Thus, her restraint-of-trade claim must be dismissed.

4.  The Business Corporation law address that a New York corporation indemnifies only its employees.

--> The Business Corporation law does not address whether a New York corporation can indemnify nonemployees.

5.  The court stated that a duty to disclose the illegal conduct of persons who seek election to a public office through political campaigns exists in only a few instances of the cases it examined.

--> The court examined many cases and found few that imposed a duty to disclose the illegal conduct of candidates for elected office.

Headings for email memo

Issue and Answer,  
Summary of Law,
Impact on Client

source: http://sites.utexas.edu/legalwriting/

Writing exercise ss 3.

1)      In March 2000, Gilbert Spaulding applied to the Workforce Commission for extended unemployment benefits.  Because those benefits were not available during the period for which he sought eligibility, the Workforce Commission denied Spaulding’s request and the lower court correctly affirmed the denial.

(    

      M. Answer) In March 2000, Gilbert Spaulding applied to the Workforce Commission for extended unemployment benefits.  The commission denied the request because those benefits were not available during the period for which he sought eligibility. The trial court affirmed.

2)      The plaintiff, Pilsen Corporation, had only requested a partial summary judgment on the discrete issue of fraud.  The intermediate appellate court affirmed the lower court’s grant of the summary judgment.  However, the state supreme court reversed the affirmation.

     M. Answer)  Plaintiff, Pilsen Corporation, moved for a partial summary judgment on the discrete issue of fraud.  The trial court affirmed the motion, and the court of appeals affirmed.  On further appeal, however, the state supreme court reversed.

3)      For three years Davis Energy has had a guard . . .  own property.  Under these circumstances, the issue is whether …

     M. Answer)  Davis Energy owns a fuel-storage yard that can be reached only by a private road.  For seven years, owners of adjacent lots have used the road to reach their property.  For the past three years, Davis has had a guard at the road's entrance but has posted no other notice about private property or permission to enter.  Has Davis, through its actions or silence, granted its neighbors an easement to use the road?

4)      Before 1958, the plaintiff Los Angeles Dodgers, the owner of a professional baseball team, played baseball in Brooklyn, New York, under the name “the Brooklyn Dodgers.”  In 1958, the plaintiff had offices in Los Angles, California, where it has played baseball since then.

      M. Answer)  Plaintiff Los Angeles Dodgers, a corporation owning a professional baseball team, began in New York as the Brooklyn Dodgers.  In 1958, the team moved the site of its home games from New York to California and changed its names to the Los Angeles Dodgers.  The organization's principal corporate offices are now in Los Angeles.

Learner's dictionary

http://www.learnersdictionary.com/

Legible

http://sites.utexas.edu/legalwriting/

Optimizing Microsoft Word for LRW

http://www.persuasiveauthority.com/2013/03/19/optimizing-microsoft-word-for-lrw/

To the extent it is determined to be necessary to include A in B,

Patent No. 6,071,103
Petition For Inter Partes Review

Although not believed to be real-parties-in-interest in the present Petition, out of an abundance of caution, Petitioner notes that it expects that a substantially similar petition is being filed by Nissan North America, Inc. To the extent it is determined to be necessary to include parties interested in that petition in the present Petition, the additional real-parties-in-interest are listed in the contemporaneously filed petition by Nissan North America, Inc. et al.

Northern California IP blog

http://blogs.orrick.com/norcal-ip/

by Orrick.

Legal citation plugin software

https://www.zotero.org/download/

http://lawlibraryguides.bu.edu/c.php?g=14784&p=79878#5776769

http://ica.library.oregonstate.edu/tutorials/631--Advanced-Zotero

Patent word geek

http://patentwordgeek.com/

102 - Anticipation

2131 Anticipation — Application of 35 U.S.C.
102 [R-11.2013]

A claimed invention may be rejected under 35
U.S.C. 102 when the invention is anticipated (or is
“not novel”) over a disclosure that is available as
prior art. To anticipate a claim, the disclosure must
teach every element of the claim.
“A claim is anticipated only if each and every
element as set forth in the claim is found, either
expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of
California, 814 F.2d 628, 631, 2 USPQ2d 1051,
1053 (Fed. Cir. 1987). “When a claim covers several
structures or compositions, either generically or as
alternatives, the claim is deemed anticipated if any
of the structures or compositions within the scope
of the claim is known in the prior art.” Brown v.
3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376
(Fed. Cir. 2001) (claim to a system for setting a
computer clock to an offset time to address the Year
2000 (Y2K) problem, applicable to records with year
date data in “at least one of two-digit, three-digit, or
four-digit” representations, was held anticipated by
a system that offsets year dates in only two-digit
formats). See also MPEP § 2131.02. “The identical
invention must be shown in as complete detail as is
contained in the ... claim.” Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913,
1920 (Fed. Cir. 1989). The elements must be
arranged as required by the claim, but this is not an
ipsissimis verbis test, i.e., identity of terminology
is not required. In re Bond, 910 F.2d 831, 15
USPQ2d 1566 (Fed. Cir. 1990). Note that, in some
circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP
§ 2131.01.

2131.05   Nonanalogous or Disparaging Prior Art [R-08.2012]

“Arguments that the alleged anticipatory prior art is ‘nonanalogous art’ or ‘teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not ‘germane’ to a rejection under section 102.” Twin Disc, Inc.v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). See also State Contracting & Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003) (The question of whether a reference is analogous art is not relevant to whether that reference anticipates. A reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims.).

A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference “teaches away” from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The prior art was held to anticipate the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”). See Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)(claimed composition that expressly excluded an ingredient held anticipated by reference composition that optionally included that same ingredient); see also Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Claimed composition was anticipated by prior art reference that inherently met claim limitation of “sufficient aeration” even though reference taught away from air entrapment or purposeful aeration.).

PTAB / BPAI data site

http://www.patentboardferret.com/

http://www.ptab.us