VASLAW Intellectual Property

VASLAW Intellectual Property Vidas, Arrett & Steinkraus, P.A. is an intellectual property law firm that helps clients in the USA.

02/13/2025

Regents of the University of Minnesota v. Gilead Sciences, Inc., March 6, 2023, Fed. Cir.

Intellectual Property:

In an interesting decision, in 2023, the Court of Appeals for the Federal Circuit cited Yogi Berra in a ruling against the U of M. The Federal Circuit invalidated a U of M patent as being anticipated in view of a prior art patent issued to Gilead Sciences.
The U of M patent was directed to a drug preventing viruses from reproducing or cancerous tumors from growing. The U of M patent claimed priority to an earlier filed provisional patent application.

The Federal Circuit held that the U of M provisional patent application disclosure relied upon to establish priority recited a compendium of common organic chemical functional groups, yielding a laundry list disclosure of different moieties for every possible side chain or functional group, where the listings of possibilities were so long, and so interwoven, that it is was very unclear as to how many compounds actually fell within the described genera and subgenera of the patent claims.

Thus, the Federal Circuit cited Yogi Berra’s quote “when one comes to a fork in the road, take it.”

The Federal Circuit ruled that the provisional patent application of the U of M did not meet the written description requirement of 35 U.S.C. § 112, and that priority to the provisional application was not available to the U of M.

The U of M provisional patent application did not constitute a full, clear, concise and exact description of the invention claimed in the later issued U of M patent, as understood by a person of ordinary skill in the art.

The intervening prior art patent to Gilead Sciences was therefore prior art to the U of M patent, and the U of M patent was anticipated and held to be invalid.

04/27/2023

ROKU, INC., v. UNIVERSAL ELECTRONICS, INC., March 31, 2023

UNIVERSAL prevailed in a PTAB inter partes review proceeding where claims 1, 3, 5 and 7 of the 9,716,853 patent were upheld as nonobvious in view of the prior art asserted by Roku. The Fed. Cir. affirmed in a 2 to 1 decision with a dissent.
The PTAB focused the teaching of the prior art, and whether the asserted prior art reference disclosed the claim element of “a listing comprised of at least a first communication method and a second communication method different than the first communication method”. The Fed. Cir. determined that this question was a question of fact on appeal.

The Fed. Cir. then limited their review to the factual support for the decision by the PTAB, and found that substantial evidence to support the PTAB decision existed.

The dissent asserted that the Fed. Cir. should apply de novo review to the issue on appeal, that is, the legal issue of obviousness of the 9,716,853 patent, as opposed to the limited issue of factual support for the PTAB decision.

04/27/2023

Intel Corporation v. PACT XPP Schweiz AG
Fed. Cir.
March 13, 2023

The Fed. Cir. recently issued a decision concerning the patentability of a multiprocessor system and how the system processors access data. The focus of the technology was the way to solve the problem of cache coherency when using multiple cache memories.

Intel Corporation was challenging the patentability of claims issued to PACT XPP Schweiz AG (PACT) in U.S. Pat. No. 9250908. The challenge was based on an argument that at the time of the invention sufficient motivation existed for a person of ordinary skill in the art to combine the prior art references together, to render the claims of the PACT patent obvious and unpatentable.

The Fed. Cir. agreed with Intel that a motivation to combine prior art references together existed, and that the previously allowed claim(s) to PACT were unpatentable.

04/27/2023

Regents of the University of Minnesota v. Gilead Sciences, Inc.
March 6, 2023
Fed. Cir.

The Court of Appeals for the Federal Circuit recently cited Yogi Berra in their ruling against the U of M. The Federal Circuit invalidated a U of M patent as being anticipated in view of a previous patent issued to Gilead.

The U of M patent was directed to a drug preventing viruses from reproducing or cancerous tumors from growing. The U of M patent claimed priority to an earlier filed provisional patent application.

The Federal Circuit held that the provisional patent application disclosure relied upon by the U of M to establish priority recited a compendium of common organic chemical functional groups, yielding a laundry list disclosure of different moieties for every possible side chain or functional group, where the listings of possibilities were so long, and so interwoven, that it is quite unclear how many compounds actually fall within the described genera and subgenera.

Thus, Yogi Berra’s cited quote “when one comes to a fork in the road, take it.”

The Federal Circuit ruled that the provisional patent application of the U of M did not meet the written description requirement of 35 U.S.C. § 112, and that priority to the provisional application was not available to the U of M. The U of M provisional patent application did not constitute a full, clear, concise and exact description of the invention claimed in the later issued patent, as understood by a person of ordinary skill in the art.

The intervening patent to Gilead was therefore prior art to the U of M patent and the U of M patent was anticipated and invalid.

09/13/2022

Ericsson Constructs a Victory on Appeal

The Examiner rejected claims, arguing that a reference met the claim limitation "measurement configuration constructed". The patent trial and appeal board (PTAB) found that the reference taught maintaining rather than constructing and reversed the Examiner.

See the decision at:

09/02/2022

Chinese Firm Uses Dead Attorney to File Thousands of Trademark Applications

In a show cause order dated August 25, 2022, the US Trademark Office indicated it had reason to believe that Shenzhen Haiyi Enterprise Management Col, Ltd. (and others) provided false, fictitious or fraudulent information in thousands of trademark applications and registrations.

See the show cause order here:

They used either a dead attorney named "Jeffrey Firestone" or a presumed fictious attorney "Jackson George", while using Chinese email addresses for the correspondence email address of record.

This is the unauthorized practice of law and a big no no.Lesson - use a registered US attorney to file, prosecute and maintain your trademarks.

Feel free to contact us at https://buff.ly/3Redgiu if you need any help with your trademarks. We are not dead or fictious.

09/01/2022

IBM won an appeal to the PTAB (Patent Trial and Appeal Board) reversing a patent examiner's 102 (anticipation) and 103 (obviousness) rejections of claims 1-20.

The claimed subject matter “relates to data storage management, and . . . to dynamically determining an optimal storage location for data, based on characteristics of various available data storage.”

See the decision at

09/01/2022

Nike is striking out at the Court of Appeals for the Federal Circuit (CAFC) in its Inter Partes Review involving Adidas. This is the third appeal Nike has lost. Is this over? We will see.

Here is the decision:

08/31/2022

Today the United States Court of Appeals for the Federal Circuit (CAFC) decided INVT SPE LLC, v. ITC and HTC America and HTC Corp. (Intervenors).

See the decision at

Here is the holding (see below), which is interesting because of the holding that a computer-implemented claim cannot be infringed without some showing that the computer-implemented device is programmed to perform the claimed function when in operation:

We affirm the Commission’s determination that there was no section 337 violation with respect to the ’439 patent because INVT failed to show infringement and the existence of domestic industry. We agree with INVT’s argument on appeal that the asserted ’439 claims are drawn to “capability.” However, we disagree with INVT on infringement.

For infringement purposes, a computer-implemented claim drawn to a functional capability requires some showing that the accused computer-implemented device is programmed or otherwise configured, without modification, to perform the claimed function when in operation. We affirm the noninfringement finding in this case because INVT failed to introduce any evidence to establish that the accused devices, when put into operation, will ever perform the particular functions recited in the asserted claims.

We find the Commission’s determination with respect to the ’590 patent moot based on the patent’s expiration, and thus vacate and remand as to that patent.

08/30/2022

Today Dropbox obtained a reversal of an Examiner's rejection of claims 1-21 by arguing that the Examiner's rejection under 103 (obviousness) didn't meet the burden of proof of showing the combination of references met the claim language. This decision could be usefully cited whenever an examiner is twisting prior art and reading it so broadly that it seems crazy (happens quite a bit).

See the decision at

08/30/2022

Today Motorola obtained a reversal of an Examiner rejection to claims 1-20. The examiner rejected these claims as anticipated by a reference, and equated "bearer" to equipment rather than a person. The examiner was reversed. This decision could be usefully cited whenever an examiner is misconstruing a person (a user or bearer or whatever) for a non-person.

See the decision at PTAB Open Data

08/29/2022

An Apple patent application. The Examiner's rejection based on 102 (anticipation) was reversed by the PTAB. Here is the rejected claim:

33. An apparatus of a User Equipment (UE) operable to
communicate with an Evolved Node-B (eNB) on a wireless network subject
to License Assisted Access (LAA), comprising:
one or more processors to:
process a reference signal transmission from the eNB;
generate an unfiltered reference signal transmission based on
the reference signal transmission; and
calculate a quality rating based upon the unfiltered reference
signal transmission.

A nice decision in which the PTAB dings the Examiner for reading the reference in a sloppy way which does meet the test that - the prior art reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” I run into this all the time and now I have a nice cite to use in arguments before examiner's.

See decision here:

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