Sunday, October 19, 2014

DNJ: Zydus Pharmaceuticals's ANDA to sell a version of Prevacid does not infringe on Takeda’s patents


No infringement of Takeda patent

There had been an issue about the claim element: “fine granules having an average particle diameter of 400 microns or less.”

Foley had discussed the CAFC decision:


The Federal Circuit first noted that “the claim language [at issue] is not qualified by the word ‘about’ or any other indicator of imprecision,” even though the hardness strength is recited as “about 1 to about 20 kg.”

Turning to the specification, the Federal Circuit noted:

The specification explains that conventional granules of that size “produce a feeling of roughness in the mouth”—one of the very problems the claimed invention purports to solve. …. That clear dividing line between the “fine” granules of 400 μm or less (which avoid a feeling of roughness in the mouth) and “conventional” granules of 400 μm or more (which do not) disappears if the “fine granules” are construed as incorporating a 10% deviation. Thus, there can be little doubt that the narrower construction “most naturally aligns with the patent’s description of the invention.”

Takeda pointed to passages in the specification that refer to a particle size of “about 400 μm or less,” but the Federal Circuit found that those same passages indicate that a smaller particle size is desired.

In the present invention, “fine granules having an average particle diameter of 400 μm or less … have an average particle diameter of about 400 μm or less, in order that roughness is not felt in the mouth. Preferably, the average particle diameter of the fine granules is 300 to 400 μm.

[T]he average particle a [sic] diameter of the included granules must be about 400 μm or less, preferably about 350 μm.

The “fine granules” have an average particle diameter of about 400 μm or less, preferably 350 μm or less. Preferably; the average particle diameter of the fine granules is 300 to 400 μm.

Overall, the Federal Circuit found that “[n]owhere does the specification suggest that an average particle size greater than 400 μm (even within 10% of that figure) could achieve the inventive result of avoiding a feeling of roughness in the mouth.”




Bloomberg post: "a strong preference by the Supreme Court to tell the Federal Circuit that it should stop thinking of itself as Lord of the Patents"

The Bloomberg post Ready for a Patented Supreme Court Smackdown? echos the conventional wisdom that the Supreme Court took Teva v. Sandoz to take the CAFC behind the woodshed:


Last year’s patent decisions revealed a strong preference by the Supreme Court to tell the Federal Circuit that it should stop thinking of itself as Lord of the Patents, and that "supreme” means just what it sounds like. Look for the court to continue pushing that message this year. The Federal Circuit may be special -- but the Supreme Court is more special. Just ask the justices.



The Bloomberg post acknowledges that Teva is destined for a loss


Oddly, none of this may help Teva: The solicitor general's office has also advised the Supreme Court justices that the appeals court’s ultimate decision was based more on its interpretation of the law that its non-deferential determination of the facts, and thus that their intervention may make no practical difference. The solicitor general clearly knows the court’s main interest is not to resolve the case in favor of Teva, but to show the Federal Circuit who’s boss -- a result the solicitor general is willing to embrace.



Teva v. Sandoz is about indefiniteness of a claim term not defined in the specification, and thus how one of ordinary skill in the art would contrue said term. That is what Teva's expert spoke to. That was the legal issue.

Saturday, October 18, 2014

The relative value of patents compared to journal publications?

From the post Scientists Share What They Really Think Of Lockheed Martin's Fusion "Breakthrough"


Although Lockheed Martin issued a press release saying it had several pending patents for its approach, the company has yet to publish any scientific papers on this latest work.

"It's really great that Lockheed has taken an interest in this important challenge of providing carbon-free energy to the world," Michael Zarnstorff, deputy director for research at the Princeton Plasma Physics Laboratory, told Business Insider in an email. "We haven't seen any results from the Lockheed experiments but the design is an interesting concept and it looks like they are at a very early stage of exploring this configuration."

More Teva v. Sandoz: what factual issue?


The underlying legal issue in Teva v. Sandoz is "how" one of ordinary skill in the art would have construed the term molecular weight when said term was not defined in the specification. The Teva expert rendered an opinion, which was directed to this legal issue. Should that opinion of an expert directed to the determinative legal issue be considered a factual issue?

A commenter on PatentlyO cites to a PatentDocs post from July 29, 2013 for the text


The Appellants challenged the lower court’s determination that “molecular weight” could be defined, because one of skill in the art would not understand which measurement (Mp, Mw, Mn, or something else) should be used. The specification of the patents-in-suit was silent as to which measurement was appropriate, other than to describe the use of SEC (which can be used to obtain all three values). Statements made in the prosecution history compounded the problem. In response to an indefiniteness rejection in one of the patents, the patentees said that “[o]ne of ordinary skill in the art, upon reviewing the specification, would understand that ‘average molecular weight’ refers to the molecular weight at the peak of the molecular weight distribution curve,” or Mp. However, in response to an identical rejection in an earlier related application, the patentees said that “”[o]ne of ordinary skill in the art could understand that kilodalton units implies [sic] a weight average molecular weight,” or Mw.

Teva argued that one skilled in the art would have understood that average molecular weight could only be Mp. Teva asserted that use of SEC without more suggests Mp because determining Mn and Mw required additional calculations. The Court appeared skeptical of this argument, because SEC can be used to calculate all three values. Teva also downplayed the prosecution history by explaining that a skilled artisan would recognize that the statement in the earlier application was false — because “kilodalton units” does not imply weight average. Teva appears to have alleged that the second statement rectified the earlier misstatement. However, there is no indication that the patentees in the later application retracted the earlier statement. Therefore, the Court was left with two contradictory statements that could not be rectified. As such, the claims in Group I were held to be indefinite.



From an IPBiz post, July 27, 2013:


As to the group I claims, Teva had a problem because of arguments made in file histories. For one application, Teva argued molecular weight was Mp (peak average) but for another Mw (weight average). As the CAFC observed, Teva's two definitions cannot be reconciled. There was also an inconsistency within a figure as between the graph itself and the legend for the figure.
[The CAFC stated the peak average molecular weight Mp is the molecular weight of the most abundant molecule in the sample, so that it is not an "average" molecular weight." The CAFC also noted that Mn is the total mass of all molecules divided by the number of molecules, but did not give a definition for Mw. For completeness, Mw is the sum of the (square of molecular weight X number with that molecular weight) divided by sum of (molecular weight X number with that molecular weight).)




From IPBiz post, Why did the Supreme Court take Teva v. Sandoz? , April 22, 2014:


The CAFC found "group I" claims, which recited "molecular weights" of 5 to 9 kilodaltons, to be ambiguous because these claims did not specify how to measure the molecular weights. The district court construed the claims to reflect the molecular weight measure Mp (peak average molecular weight). Viewed in this light, the CAFC merely observed the self-evident legal problem: the claim did not say "which measure" of molecular weight was intended. End of story.

That is, without going into any "facts," one observes that the claim itself does not specify "which" measure of molecular weight is to be be used. This ambiguity was specifically identified by the Examiner during prosecution of the '539 and '847 patents. One might have thought the Examiner would have required insertion into the respective claims of the specific molecular weight measure. However, the Examiner apparently accepted arguments without requiring an amendment to achieve clarity. For the '539 patent, Teva said it was peak average, but for the '847 patent it was weight average. The contradictory resolution is a self-evident problem.

The matter of "facts" in the case enters in with the testimony of Teva's expert, Dr. Grant. The gist of his argument seems to be that because only Mp can be read directly from a size exclusion curve, Mp must have been intended for the "group I" claims. One wonders "why" the ability to read a parameter directly from a graph is proof of "which parameter" was intended in a claim.

As to legal matter of "clear error," the clear-error standard “requires
us appellate judges to distinguish between the situation in
which we think that if we had been the trier of fact we would
have decided the case differently and the situation in
which we are firmly convinced that we would have done so.”); Carr v. Allis
on Gas Turbine Div., Gen. Motors Corp., 32 F.3d 1007,
1008 (7th Cir. 1994)

Arguably, the crediting of the reasoning of Dr. Grant by the district court could be deemed clear error, and the debate rendered moot. [same outcome under either standard]



One year anniversary of Rader's "death squads" remark

From BNA on October 29, 2013, Rader Regrets CLS Bank Impasse, Comments on Latest Patent Reform Bill


On one side of the PTO, he [Rader] said, “You have 7,000 people giving birth to [intellectual] property rights,” while in the PTAB, there will soon be as many as 300 administrative patent judges “acting as death squads, killing property rights.”

US 3,819,974: Gallium nitride metal-semiconductor junction light emitting diode

US 3,819,974, with a claim to a light emitting diode comprising gallium nitride and magnesium doped gallium nitride, issued on June 25, 1974.

One notes that the "description of preferred embodiment" in US '974 is written in the present tense, not in the past tense.

Wally Rhines has a post in EE Times titled "Nobels Should Celebrate Invention and Optimization."

A comment to the Rhines post by Rick Merritt correctly distinguishes between innovation [what the Nichia people did] and invention [what Maruska, Rhines, Stevenson did].

See also a post in Physics Today Wall Street Journal op-ed disputes physics Nobel achievement’s provenance . The Wall Street Journal post How America Lighted the Way for a Japanese Nobel

See also Nobel Shocker: RCA Had the First Blue LED in 1972

Newsworks has a story on an experiment done on Maruska's initial device, which includes the text


After hearing of the Nobel announcement, and the omission of Maruska, Gross wanted to see if the prototype blue LED still worked. (...)

First thing they do is check the power source, a 22.5 volt battery attached to the back.

"Son of a gun, it actually has some poop," Allen says after plugging it into a volt meter.

"How much voltage are we talking here?" says Gross.

"20 volts," replies Allen.

"That's not bad," Gross says. (...)

"We got it, it is lighting faintly. We've got blue, it is glowing, that is definitely blue. It is beautiful!" says Gross.

A voice crackles with joy over the phone: "After all these years?"

These guys are over the moon. This little blue light, this artifact from the tale end of the golden age of American technology still fires.

The Nobel may have overlooked this contribution, but the foundation for the light bulbs of the future was laid in America.






Separately, a discussion by Paul Maruska appears at

http://www.sslighting.net/news/features/maruska_blue_led_history.pdf


which includes mention of how RCA failed to followup on Maruska's work.

In passing, one notes that blue LED story illustrates a number of aspects of patent strategy. That LED's could be used as a (white) light source was predicted in a 1963 in a Reader's Digest article, is mentioned in the 1974 patent, but did not "change the way we live" (an innovation) for more than thirty years later.

Different elements of patent strategy are illustrated in the story of Richard K. Lyon. Both Lyon and Maruska left Exxon Corporate Research Laboratory in the year 1986.

**See also

http://ipbiz.blogspot.com/2014/10/nakamura-nobel-prize-and-compensating.html

Friday, October 17, 2014

CardSoft loses big time at the CAFC

From CardSoft v. Verifone:


CardSoft alleges that Appellants infringe two patents
directed to software for small, specialized computers,
like payment terminals. In construing the patent claims, the
district court adopted
CardSoft’s proposed construction for
the claim term “virtual machine.”
Applying the district
court’s construction,
a jury returned a verdict for CardSoft.
Because the district court erred in
its construction of
“virtual machine,” and because CardSoft waived any
argument that Appellants infringe under the correct
construction, we reverse.

Senator John Walsh, post-plagiarism: "You have to pick yourself up, dust yourself off and move forward."

Yahoo has an interview with Senator John Walsh, after his degree from the War College was stripped,
On the back of a Harley, John Walsh reflects on what could have been

Within the post:


The document that would ultimately lead to his political demise was a 14-page research paper he wrote to receive a master's degree from the War College in 2007. The paper, titled "The Case for Democracy as a Long Term National Strategy," borrowed heavily from work done by the Carnegie Endowment for International Peace and a Harvard paper.

"I admit I made a mistake. I've made mistakes before in life, and I will probably unfortunately make mistakes again," Walsh told Yahoo News before his Harley ride here in July. "You have to pick yourself up, dust yourself off and move forward."

Thursday, October 16, 2014

Fast hydrothermal liquefaction of algae

A paper in the journal Algal Research reports on increased liquid yields from algae using "fast" hydrothermal liquefaction:


Using small quartz tube "reactors" – which look like tiny sealed straws – Tran heated the reactor containing a slurry made from the kelp biomass and water to 350 degrees C at a very high rate of 585 degrees C per minute.





An issue is that such liquids tend to have a level of nitrogen not suitable for use as fuels.

As to making more oil from algae, there is recent work at Michigan State University:



“Algae provide us with model organisms that rival, or possibly exceed, traditional yeast models,” Benning said. “It’s quite difficult to grow many types of human cells in test tubes. However, we can readily grow, manipulate and study algae, which have the genomic repertoire that make them relevant in their capacity to drive advances in human medicine.”

The discovery was made while tackling the conundrum of algae’s vexing inverse relationship with growing mass versus producing oil. When algae are awake, they grow; when they’re asleep, they produce oil.

“Producing oil is part of the cells’ survival strategy when it’s under stress,” said Chia-Hong Tsai, doctoral candidate with MSU’s Department of Energy Plant Research Laboratory and Department of Plant Biology and co-author. “They go into quiescence to conserve energy and nutrients. That’s when they produce the equivalent of vegetable oil. But to convert them into truly viable biofuel producers, we need them to grow and produce oil simultaneously.”

The secret for making this happen was CHT7 – the gatekeeper that cues cells to wake up or fall asleep. By engineering this protein, Benning’s team might one day develop an organism that can’t figure out how to doze and is always active. For biofuels, this would remove a major hurdle and gives scientists a way to potentially produce high amounts of oil and biomass.

Oral argument in Teva v. Sandoz

Reuters covered the oral argument in Teva v. Sandoz in the post Supreme Court divided in battle over Teva MS drug patent .

The Reuters text included:


Several justices, including Chief Justice John Roberts and Justice Samuel Alito, appeared reluctant to tinker with the existing system in which the appeals court is accorded great latitude in rethinking lower court findings.

"Is it worthwhile as a practical matter?" Alito asked, referring to the notion of disrupting the status quo.

Justice Sonia Sotomayor added, "Why don't we defer, as has been done now forever, to the Federal Circuit?"

Other justices seemed more concerned about the appeals court exerting too much power over lower court judges. Justice Stephen Breyer cited other areas of the law in which lower court judges have discretion.



The oral argument may be found here

William M. Jay presented the argument on behalf of petitioner (Teva), and started off with the proposition "trial judges find the facts." Justice Ginsburg immediately asked about the "facts" at issue in this case.

Later, Jay recommends "deference to classic fact-finding."

Justice Ginsburg brought up the point that inferences from facts get de novo review.


Justice Kagan got to the point of expert opinion testimony.

Justice Alito brought up a law review which suggested there is no practical difference between de novo review and clear error review.

There was some tense interplay between Mr. Phillips and Justice Breyer.

Justice Breyer stated that most amici favored fact-finding by the district court. (page 42) [This point seems in conflict with material at PatentDocs, Teva v. Sandoz -- Is Deferential Review a Boon for Patent Trolls? , which stated that the amici briefs favored de novo review: Interestingly, of the three amicus briefs submitted by operating companies themselves (representing 20 companies in total), all supported maintaining the de novo standard of review.]

At page 47 and page 48, there was a question of "how many" patents issue per year. No answer.

At page 49, one has the text "misstatement of science."

As to errors in science by district courts, one egregious chemistry mistake happened in 52 USPQ2d 1418, 1429 (D.Az. 1998) as later corrected in Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 59 USPQ2d 1238 (CAFC 2001). In various issues of "Intellectual Property Today" [IPT], LBE discussed the scientifically incorrect analysis of stoichiometry which underlay the district court decision. See the March 2002 issue of IPT: Omissions and Commissions: Durel v. Osram Revisited

***See discussion at PatentlyO including comment by Ned Heller:

http://patentlyo.com/patent/2014/10/african-canaries-question.html

Michel on Michelle, as Lee gets the nod for permanent appointment as USPTO Director

From a Reuters post titled White House nominates former Google exec Lee to head patent office :


Paul Michel, who retired from the U.S. Court of Appeals for the Federal Circuit in 2010 [and formerly Chief Judge], once employed Lee to clerk for him on the court, which specializes in patent and trademark cases.

"Her academic record was just astronomically impressive. If my memory serves me right, she got an A in every class she took at MIT," Michel told Reuters.

Wednesday, October 15, 2014

CAFC affirms D. Arizona in Thermolife v. Creative Compounds

There was a Rule 36 judgment in Thermolife v. Creative Compounds.


For material related to the case, see http://docs.justia.com/cases/federal/district-courts/arizona/azdce/2:2011cv01965/647058/71/.

Note the citation to Juicy Whip.

Teva v. Sandoz: alternative universe

Much is being written about Teva v. Sandoz in the context of de novo review.
The actual case at the CAFC was about indefiniteness of the meaning of
molecular weight, in part because the term was not defined in the specification.

Had the initial examiner raised, and persisted in, a rejection based on
indefiniteness, one would likely have obtained a result as in the recent Tay case.
Broadest reasonable interpretation indicates all reasonable meanings of
molecular weight are included. Teva loses.

Instead we are at the Supreme Court discussing de novo review and deference
to a district court which relied upon an expert opinion as a fact.

See also previous Ipbiz post on Cookie Cockatoo.

Tuesday, October 14, 2014

Sanctions under Rule 11 more powerful tool against "trolls" than eliminating Rule 84

Some discussion Rule 84 / Form 18 has appeared; see the two comments to the post The Judicial Conference of the U.S. makes small rules change for patent infringement and
One weird legal trick that makes patent trolls cry

Yes, Ultramercial v. Hulu does cite Bell Atlantic v. Twombly, 550 U.S. 544, 555 (2007)

and one also should consider Rule 11.

From a 2008 IPBiz post:



as the district court noted, this court has explained that
[i]n bringing a claim of infringement, the patent holder, if challenged, must
be prepared to demonstrate to both the court and the alleged infringer
exactly why it believed before filing the claim that it had a reasonable
chance of proving infringement. Failure to do so should ordinarily result in
the district court expressing its broad discretion in favor of Rule 11
sanctions, at least in the absence of a sound excuse or considerable
mitigating circumstances.
View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000).



See also article by Hana Oh Chen , Jurimetrics, Vol. 54, No. 2, 2014, including text:


Sanctions under Rule 11 can be such a tool in curbing frivolous infringement suits. Rule 11 is particularly useful in the patent litigation context because it applies throughout the stages of litigation, including the initial stages, and its provisions help prevent the overdeterrence of claims with merit. A technology-specific application of the prefiling investigation requirement under Rule 11 can be an effective weapon in deterring plaintiffs from bringing meritless claims.

Patentees don't do well in court

PatentlyO mentions work of Allison, Lemley & Schwartz on Patent Litigation noting



Overall, patent challengers tend to win: Overall, patent holders tended not to win in cases that went to a definite merits resolution. Overall, patentees won only about 26% of the time (164/636 definitive merits rulings). In addition to invalidity, patent holders lost on frequently-brought motions for summary judgment of noninfringement 54% of the time (257/473) and infrequently obtained summary judgment on more rarely-brought motions for summary judgment of infringement (41/128). Thus, although patentees had a fairly high success rate at trial (winning on 59% of patents when juries made the decision and 64% when the bench did), the 1-2 punch of summary judgment followed by trial meant that most patent cases that went to judicial resolution were resolved in favor of the patent challenger.




One recalls the earlier PriceWaterhouse study. From IPBiz on the study:


Chart 9a suggests that the overall success rate for patentees is only 33%, with only two judicial districts [ED TX and MD FL) giving patentee success rates above 50%.

Pro se appellant Tay loses at the CAFC

An undefined term in the application was given its broadest reasonable interpretation and anticipatory art was identified.


The term contact is not defined in the
’864 application. Based on our review of the ’864 application
and the prior art, we agree that the broadest reasonable
construction of contact encompasses the reflective
layer disclosed by the prior art ’053 application.



link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1415.Opinion.10-9-2014.1.PDF

SSL prevails over Citrix on the '011 patent


As to willful infringement, from
SSL v. Citrix:


To establish willful infringement, the patent holder
must show clear and convincing evidence that: (1) “the
infringer acted despite an objectively high likelihood that
its actions constituted infringement” and (2) “that this
objectively-defined risk . . . was either known or so obvious
that it should have been known to the accused infringer.”
In re Seagate Tech., LLC, 497 F.3d 1360, 1371
(Fed. Cir. 2007) (en banc). We review the first objective
prong de novo and the second subjective prong for substantial
evidence. See Bard Peripheral Vascular, Inc. v.
W.L. Gore & Assocs., 682 F.3d 1003, 1005–08 (Fed. Cir.
2012), cert. denied, 133 S. Ct. 932 (2013).

(...)
After the district court found the objective prong satisfied,
it submitted the issue of willful infringement to the
jury. The jury returned a verdict finding that Citrix
willfully infringed the relevant claims of the ’011 Patent.
SSL and the district court pointed to several items to
support the jury’s finding of willfulness, including the VOne
Agreements, V-One executives’ confirmation of
Citrix’s knowledge of the ’011 Patent, Citrix’s full access
to the V-One technology, and a Citrix executive’s admission
of knowledge of the ’011 Patent based on the V-One
Agreements.
Citrix disagrees, claiming that substantial evidence
does not support the subjective prong of willfulness.



As to opinions about infringement by non-legal
specialists:



Citrix argues that it should receive a new trial on
willfulness because the court prevented the jury from
hearing fact testimony from its Chief Engineer, Marco
Murgia, that: (1) Citrix believed in good faith that its
products were non-infringing; and (2) that reexamination
proceedings had been initiated at the PTO. The district
court held that Murgia could not opine on whether the
accused products infringed claims of the ’011 Patent to
support Citrix’s good faith belief of non-infringement.
SSL Servs., 940 F. Supp. 2d at 500–01. Specifically, the
district court found that “it would be significantly prejudicial
to allow a fact witness[ ] to testify as to his opinions
on the issues of infringement and validity, particularly
when the testimony expressing such an opinion would be
rendered without regard for how this Court has construed
the claims.” Id. at 500. The district court also precluded
testimony on the then


As to obviousness:


We review the ultimate legal conclusion of
obviousness de novo in light of the underlying factual
findings. Kinetic Concepts, 688 F.3d at 1356–57.



Conclusion


For the reasons stated above, we affirm the district
court’s judgment of non-infringement of the ’796 Patent,
willful infringement of the ’011 Patent, no invalidity of
the ’011 Patent, award of prejudgment interest, and find
no error in its evidentiary rulings. We also vacate the
district court’s finding of no prevailing party and remand
for further proceedings consistent with this opinion.


link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1419.Opinion.10-9-2014.1.PDF

Bosch loses to SnapOn at the CAFC

In Bosch v. Snap-On, the CAFC affirmed ED Michigan's determination that the claims of the Bosch '313 patent were invalid with no support in the specification for a claim under 112 P 6.

Of the law


Section 112, ¶ 6 (now § 112(f)) allows a patentee to
express a claim limitation as “a means or step for performing
a specified function without the recital of structure,
material, or acts in support thereof,” and the section
provides that claim limitations expressed in this manner
“shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.”

(...)

If we conclude that a claim term invokes § 112, ¶ 6,
we proceed to the second step and attempt to construe the
disputed claim term by identifying the “corresponding
structure, material, or acts described in the specification”
to which the claim term will be limited. Welker Bearing
Co. v. PHD, Inc., 550 F.3d 1090, 1097 (Fed. Cir. 2008). If
we are unable to identify any “corresponding structure,
material, or acts described in the specification,” the claim
term is indefinite. Noah Sys., Inc. v. Intuit Inc., 675 F.3d
1302, 1312 (Fed. Cir. 2012) (“[A] means-plus-function
clause is indefinite if a person of ordinary skill in the art
would be unable to recognize the structure in the specification
and associate it with the corresponding function in
the claim.”) (citations omitted).



Of one nuance in the case


On this initial issue we agree with Bosch. We are unaware
of any precedent stating that the presumption is
triggered by a claim’s use of the expression “by means of.”
In the past we have applied the presumption when a
claim uses the word “means” as a noun in the claim: a
“means” for doing something. We have not done so for the
phrase “by means of.”

Therefore, we conclude that the district court erred in
adopting a presumption that “program recognition device”
is a means-plus-function term based on the phrase “by
means of” in claim 1. However, for the reasons discussed
in the Part III.B, infra, that error was harmless, as even
without the benefit of the presumption, “program recognition
device” still invokes § 112, ¶ 6.



But Bosch still had problems


Although both “program recognition device” and “program
loading device” are presumed not to invoke § 112,
¶ 6, we must next turn to the issue of whether this
“strong” presumption against means-plus-function claiming
is overcome. See Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). In
undertaking this analysis, we ask if the claim language,
read in light of the specification, recites sufficiently definite
structure to avoid § 112, ¶ 6. Inventio, 649 F.3d at
1357. The question is whether the claim language names
particular structures or, instead, refers only to a general
category of whatever may perform specified functions.
See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1536
(Fed. Cir. 1991) (“[t]he recited structure tells only what
the means-for-joining does, not what it is structurally”).
In the latter case, § 112, ¶ 6 then commands a construction
of the limitation as referring to specificationidentified
corresponding structures and their equivalents.
Snap-On argues that the claim terms “program recognition
device” and “program loading device” each lack
sufficiently definite structure. Indeed, this court has
found the word “device” to be a non-structural, “nonce”
word. See Mass. Inst. of Tech. v. Abacus Software, 462
F.3d 1344, 1354 (Fed. Cir. 2006); Personalized Media
Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705
(Fed. Cir. 1998). And the other words do nothing more
than identify functions for the “device” to perform.



Of expert witnesses:


Finally, Bosch argues that the district court improperly
disregarded the declaration of its expert witness, Dr.
Wagner, who is also a named inventor. At a minimum,
Bosch alleges that this declaration created a disputed
issue of material fact.

(...)
However,
merely listing examples of possible structures is insufficient
to avoid invocation of § 112, ¶ 6.



Bottom line


Since we agree with the district court that both “program
recognition device” and “program loading device”
are means-plus-function terms and that the specification
does not disclose the requisite corresponding structures,
we affirm the district court’s holding that all claims in the
’313 patent are invalid as indefinite.

Monday, October 13, 2014

US Patent 8,851,081 to Philip Morris: electrically heated smoking system

The first claim of US 8,851,081 :


An electrically heated smoking system for receiving an aerosol-forming substrate, the system comprising:

a substrate;
at least one heating element for heating the substrate to form an aerosol;
a power supply connected to the at least one heating element and operable to supply power thereto;
programmable electrical hardware connected to the power supply and the at least one heating element, the electrical hardware being configured to communicate over a bidirectional communications link with a remote host and control the at least one heating element in heating the substrate based on the control parameters received over the communications link.



The inventors are European and priority is claimed to European Patent Application No. 0 825 1450, filed Apr. 17, 2008 .