Posts filtered by tags: Dennis Crouch[x]


 

Three recent Utility Decisions at the PTAB

by Dennis Crouch Utility Doctrine does not get much use in patent prosecution.  Still, examiners do reject claims on utility grounds. The following are three recent PTAB decisions that all reverse examiner utility rejections.  In Horne, focus is whether a partially-built tool has any utility; In Zauderer, the question is whether a theoretical rocket ship design has any credible utility; and in Grajcar the question focuses on whether data was provided to support a sex-selection method. Ex parte H...
Tags: Law, Patent, Horne, Dennis Crouch, PTAB, MHD, Zauderer, Grajcar


Trademark on Product Design: Are these biscuit sticks functional

by Dennis Crouch A potentially important product design trademark case is pending before the U.S. Supreme Court involving those chocolate covered bready-sticks. Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., Docket No. 20-1817 (Supreme Court 2021).  Glico’s Pocky product has been sold since 1966 and are apparently popular. Lotte’s Pepero’s are a knock-off version. Glico sued for trademark infringement, asserting Glico’s trademark rights in the product design of chocolate-cove...
Tags: Supreme Court, Law, US, Patent, U S Supreme Court, Lotte, Third Circuit, Rod, 3rd Circuit, Dennis Crouch, INTA, Glico, Ezaki Glico Kabushiki Kaisha, Pepero


Supreme Court Called Again to Review IPR Appeal: This time on Discretionary Denials

by Dennis Crouch The NHK-Fintiv Rule provides the PTAB with authority to deny institution of IPR proceedings when the challenged patent is already subject to pending parallel district court litigation.  The rule stems from two PTAB decisions that were later designated as precedential. NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, 2018 WL 4373643 (Patent Tr. & App. Bd. Sept. 12, 2018), designated precedential on May 7, 2019. Apple Inc. v. Fintiv, Inc., IPR2020-00019, 2020 WL ...
Tags: Apple, Supreme Court, Law, Congress, Patent, Apple Inc, Fed, Board, Lee, Gilstrap, PTO, NHK, Federal Circuit, Cisco Systems Inc, IPR, Dennis Crouch


Congratulations Judge O’Malley

by Dennis Crouch In my mind, Judge O’Malley is still a newcomer to the Court of Appeals for the Federal Circuit, but the official records show that she joined back in 2010 as President Obama’s first nominee.  Prior to joining the Federal Circuit, Judge O’Malley had already been a Federal Judge (N.D. Ohio) for 16 years.  Her experience as a trial court judge has added significant depth and nuance to the appellate court over the past decade and in here 200+ opinions and orders.  Above all, she is ...
Tags: Law, Obama, Senate, Ohio, Biden, Patent, Cunningham, O'Malley, Court of Appeals for the Federal Circuit, Dennis Crouch


Conception for Joint Inventors

by Dennis Crouch Most patents involve two or more joint inventors who all claim to have contributed significantly to the invention.  Conception of the invention is typically seen as the critical legal determinant of invention and some courts have written that each joint inventor must have contributed substantially to the conception of the invention.*  Conception is typically referred to as a mental act. The MPEP, for example, includes a statement in all-caps that “CONCEPTION MUST BE DONE IN THE ...
Tags: Law, Harvard, Patent, Fed, Kyoto University, Federal Circuit, Dana Farber, Dennis Crouch, Pannu, Honjo, Lourie, Giovanni Battista Tiepolo, Iolab Corp, Ono Pharm Co Ltd, Dana Farber Cancer Inst Inc, Dana Farber Cancer Inst


Adequate Notice and the Administrative Procedures Act

by Dennis Crouch Here, the CAFC has vacated a PTAB IPR decision based upon a sua sponte claim construction. The court found that the agency did not provide the notice and opportunity to respond required by the Administrative Procedures Act (APA).  Qualcomm Inc. v. Intel Corp., Appeal No. 20-1589 (Fed. Cir. 2021) Intel filed six different IPR petitions challenging Qualcomm’s US Patent No. 9,608,675.  The PTAB complied and cancelled the challenged claims as obvious.  On appeal here, the Federal Ci...
Tags: Law, US, Intel, Commission, Itc, Qualcomm, Patent, Fed, Marshall, Board, APA, Federal Circuit, Intel Corp, WesternGeco, Dennis Crouch, CAFC


Trade Secrets Pre Patenting

by Dennis Crouch Although trade secrets are independently important, they are play a key temporal role in the patenting process.  The touchstone of invention is when the inventors have a full mental conception of the invention, including how to make and use the invention. But, there is typically a months-long process of moving from conception to a filed patent application.  During that time the invention is typically kept secret in order to avoid losing patent rights due to early disclosure.  An...
Tags: Law, Patent, UTSA, Dennis Crouch


They Patented a Better SandBox — Obviousness IPRs

by Dennis Crouch Today’s decision by the Federal Circuit includes an example of thinly sliced bologna, with the court rejecting a PTAB IPR decision because the precise obviousness argument regarding a functional limitation was not expressly stated.  The court also does another go-round with the PTAB failing to consider commercial success.  Oren Tech v. Proppant Express (Fed. Cir. 2021) Lots of petroleum is trapped by deep rock formations that are difficult to drill-out one-by-one. Hydraulic frac...
Tags: Law, US, Smith, Patent, Board, The Board, Federal Circuit, Oren, IPR, Hendrick, Dennis Crouch, PTAB, Oren Tech, Proppant Express Fed, US Silica


Right to Repair at the FTC

by Dennis Crouch In a unanimous vote among the five commissioners, the Federal Trade Commission (FTC) will move forward with a new policy regarding the right-to-repair.  This decision was foreshadowed by a 2019 workshop and 2021 report to Congress. The Commission is taking four steps: Stepping up enforcement of the Magnuson-Moss Warranty Act prohibitions on tie-in sales, inter alia. Scrutinizing repair restrictions to determine whether they violate US antitrust laws. Scrutinizing repair restric...
Tags: Amazon, Law, US, Patent, Ftc, Trump, New America Foundation, Federal Trade Commission FTC, Dennis Crouch, Lina Khan, Congress The Commission


Notes on Ex Parte Appeals of Patent Cases

by Dennis Crouch The vast majority of ex parte patent appeals (92%) are focused on obviousness, with 2/3 of those only addressing obviousness questions. It is rare for any other issue to be the sole issue on appeal: 2.5% of appeals solely focus on Section 101; 1% of appeals solely focus on Section 102; 2.2% of appeals solely focus on Section 112 (including 112(a) and 112(b)). Applicants regularly win obviousness appeals — winning reversal of the obviousness issue in about 35% of cases and pa...
Tags: Supreme Court, Law, Patent, Dennis Crouch, Teleflex Inc, KSR Int ' l Co, Ex Parte Appeals of Patent Cases


PTAB Generally Affirms Eligibility Rejections

by Dennis Crouch If affirmances by the Patent Trial and Appeal Board (PTAB) are any guide, patent examiners appear to now have a good handle on applying the PTAB eligibility examination guidance.  I looked at  PTAB patent eligibility decisions from the past month and found that examiner eligibility rejections were affirmed in 92% of cases (55 of 60 decisions). There were also five cases where the PTAB added eligibility as a new ground for rejection. 92% affirmance for eligibility issues is quit...
Tags: Maryland, Supreme Court, Law, Uspto, Patent, Patent Trial and Appeal Board PTAB, Dennis Crouch, PTAB, Bilski, Federal Circuit and Supreme Court, Lawrence Ausubel, Tazano


Pleading Infringement: Twombly does not Require Element-by-Element Infringement Pleading

by Dennis Crouch BOT M8 v. Sony (Fed. Cir. 2021) Pleading Standards: The starting point of a civil lawsuit is the filing of the complaint that makes a claim for relief.  FRCP 3.  In order to properly state a claim, the rules require “a short and plain statement of the claim showing that the pleader is entitled to relief.” FRCP 8.  For many years, the rules included an Appendix of Form Complaints deemed legally sufficient to satisfy R. 8. Form 18 focused on patent infringement and included a bare...
Tags: Supreme Court, Law, US, Sony, Patent, Bell, Iqbal, Federal Circuit, Ashcroft, FRCP, Dennis Crouch, Twombly, Sony Fed, Element Claim Analysis, Bill of Lading Fed


Another week, another mandamus

by Dennis Crouch In re Uber Technologies, Inc. (Fed. Cir. 2021) Another week, another mandamus. This case is parallel to In re Samsung discussed earlier where Ikorongo divided its patent rights between Ikorongo-Texas (right to enforce in W.D.Tex.) and Ikorongo-Tech (right to enforce elsewhere in USA).  In Samsung, the appellate court rejected this brazen attempt to manipulate venue. Here, the court found “no basis for a disposition different from the ones reached in Samsung” and ordered transfer...
Tags: Usa, Law, Samsung, Patent, Tex, Dennis Crouch, Ikorongo, Ikorongo Texas, In re Uber Technologies Inc Fed, N D Cal Bald Faced Attempt


It is Time to Tell Your Eligibility Stories

by Dennis Crouch At the behest of several leading Senators, the USPTO has begun a study on the “Current State of Patent Eligibility Jurisprudence.”  To that end, the agency is seeking comments from the public that will be due by Early September.  The agency would like input from various stakeholders, including inventors, owners, investors, licensees, users, and patent attorneys. The agency appears to be looking from key insight regarding the actual experience of parties involved — telling a stor...
Tags: Law, US, Uspto, Patent, Agency, Federal Register, Dennis Crouch, Hirshfeld


Iconic Timberland Boots — Trade Dress Worthy?

by Dennis Crouch Timberland has been selling its iconic boots back in 1973 – almost 50 years ago.  Actually, at the time the company name was Abington Shoes, but quickly changed its name to Timberland Boot because of the popularity.  Timberland did not patent or register a copyright the design, and the market it rife with copycat boots. Over the past several years, Timberland has been attempting to register the shape of the boots as protectable trade dress. However, the USPTO’s Trademark Trial &...
Tags: Law, Uspto, Patent, Dennis Crouch, Ttab, Timberland, Hirshfeld, Trademark Trial Appeal Board TTAB, Dennis Crouch Timberland, Abington Shoes, TBL Licensing


What is Your Preferred Method for Attacking Functional Claims?

by Dennis Crouch VoIP-Pal.com, Inc. v. Apple, Inc., No. 20-1809 (Supreme Court 2021) VoIP-Pal sued Apple for infringing its U.S. Patent Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549.  Apple filed four petitions for for inter partes review, but all four were denied by the PTAB. Judge Koh then dismissed the infringement case in Apple’s favor–finding that all asserted claims were directed to ineligible subject matter.  On appeal, the Federal Circuit affirmed without opinion (R.36). Now, VoI...
Tags: Apple, Law, Court, Patent, Apple Inc, Koh, Inc, Federal Circuit, Dennis Crouch, Nintendo of America Inc, iLife Technologies Inc, Neapco Holdings LLC, Court See American Axle Manufacturing Inc


Bald-Faced Attempt to Manipulate Venue Rejected

by Dennis Crouch In re Samsung Electronics Co., LTD (Fed. Cir. 2021) The Federal Circuit has again granted mandamus and ordered Judge Albright to transfer two cases case out of his W.D.Tex. court to a more convenient forum (N.D.Cal.). The underlying actions were filed by a patent holding company known as Ikorongo Texas LLC against Samsung and LG Electronics. As explained below, the owners of Ikorongo Texas formed the company as an attempt to solidify venue in W.D.Texas and avoid the case being t...
Tags: Apple, Texas, Supreme Court, Law, California, US, Samsung, Nevada, North Carolina, Patent, Albright, Federal Circuit, Lge, Tex, Dennis Crouch, N D Cal


Do you Tell the PTO that the Disclosed Embodiments are Merely Prophetic?

by Dennis Crouch Many patent applications are not fully reduced-to-practice by the time the patent application is filed. Although reduction-to-practice is a required element of invention, the Courts and Patent Office have long permitted the filing of a patent application to constructively satisfy the RTP requirement. Still, the application must fully satisfy the disclosure requirements of 35 U.S.C. 112(a), namely written description, enablement, and best mode. A patent specification will typica...
Tags: Law, Uspto, Patent, Fed, PTO, Patent Office, Dennis Crouch, MPEP, Freilich, Janet Freilich


PTO Director Review Process following Arthrex

by Dennis Crouch The USPTO has released some implementation information for Arthrex. In its decision, the Supreme Court held that the USPTO Director has power to review any IPR decision by the PTAB.  The Agency’s basic approach is as follows: At times, the PTO Director might initiate review of an IPR Decision sua sponte. This is unlikely. A party may request review of a final written decision for an IPR/PGR. The request must be filed within 30-days of the PTAB’s final written decision...
Tags: Supreme Court, Law, Office, Pop, Uspto, Patent, Agency, PTO, Federal Circuit, IPR, Dennis Crouch, PTAB, Request for Review


Supreme Court: Closing out the Docket for 2020-21

by Dennis Crouch The US Supreme Court has almost cleaned-up its patent docket for the October 2020 term.  I still expect a decision at some point this week (by July 2) in Minerva Surgical, Inc. v. Hologic, Inc. focusing on the ongoing viability of assignor-estoppel.  The court has already decided its one other patent-focused case for the term–United States v. Arthrex, 594 U. S. ___ (2021). In Arthrex, the court altered the power of the PTO Director beyond statutory limitations in order to preser...
Tags: Supreme Court, Law, Court, US, United States, Patent, US supreme court, PTO, Federal Circuit, Hologic Inc, Western Digital Corp, IPR, Dennis Crouch, CVSG, Arthrex Inc, PTAB


Disclosure and Definiteness

I believe the clincher in this case is the fact that TVnGO’s patent claims use language not found anywhere within the patent specification.  The result, claims invalid as indefinite. — Dennis Crouch TVnGO v. LG Electronics (Fed. Cir. 2021) (nonprecedential) [Opinion] Patentee TVnGO sued LGE–alleging that its Smart TV’s infringed U.S. Patent Nos. 8,132,220, 9,124,945, 9,392,339, 9,407,969, and 9,794,621.  The district court found all asserted claims across the five related patents invalid as inde...
Tags: Supreme Court, Law, Patent, U S Supreme Court, Merrill, Eaton, Reyna, Federal Circuit, Prost, Lge, Winans, Dennis Crouch, Nautilus Inc, Biosig Instruments Inc, Schall, Yeomans


Found Patentable -or- Not Proven Unpatentable

Hypo: PTAB issues final written decision siding with patentee, PTO issues the IPR Certificate maintaining the claims. What is the legal result regarding the claims: — Dennis Crouch (@patentlyo) June 22, 2021 = = = = by Dennis Crouch In an Inter Partes Review (IPR), the PTAB generally focuses on whether or not the claims have been proven unpatentable.  If the patentee, the PTAB has a general approach of issuing a declaratory order that the claims “have not been shown, by a preponderance of...
Tags: Law, Uspto, AIA, Patent, Board, PTO, IPR, Dennis Crouch, PTAB, Inter Partes Review IPR, Inter Partes Review Certificate


Patent Eligibility: No Patenting a Correlation

by Dennis Crouch iLife Technologies, Inc. v. Nintendo of America, Inc., No. 20-1760 (Supreme Court 2021) [Petition] iLife’s recent petition for writ of certiorari matches those found in American Axle’s pending petition: What is the appropriate standard for determining whether a patent claim is  directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101? Is patent eligibility (at eac...
Tags: Law, Court, Nintendo, Patent, Trump, SG, Federal Circuit, IPR, Dennis Crouch, PTAB, Nintendo of America Inc, Prometheus Labs Inc, iLife Technologies Inc, Mayo Collaborative Servs, Am Axle the Supreme Court, U S Government Solicitor General


The morning read for Tuesday, June 22

Each weekday, we select a short list of news articles, commentary, and other noteworthy links related to the Supreme Court. To suggest a piece for us to consider, email us at [email protected] Here’s the Tuesday morning read: With the courts (and Kavanaugh) on their side, advocates plot future challenges to the NCAA (Molly Hensley-Clancy, The Washington Post) The NCAA, the Supreme Court, a Duck, and a Bicycle (Jason Gay, The Wall Street Journal) Supreme Court Protects Faith-Based Adopt...
Tags: Supreme Court, Law, Washington Post, Ncaa, Round-up, Kavanaugh, Dennis Crouch, Arthrex, Wall Street Journal Supreme Court, Molly Hensley Clancy, Amanda Shanor, Jeremy Dys Newsweek, Regulatory Review United States


Patents are Political

By Dennis Crouch I have been repeating this mantra for quite a while – patents are political. In US v. Arthrex, the Supreme Court added an exclamation point.  By design, the US governmental system places presidential political appointees at the top of each executive agency, including the US Patent & Trademark Office so that the US President can then be held directly accountable for the successes and failures.  Note here that the accountability we’re talking about is political accountability. The...
Tags: Supreme Court, Law, US, Patent, Hamilton, PTO, US Patent Trademark Office, IPR, Dennis Crouch, Trademark Trial and Appeal Board, Arthrex, Arthrex the Supreme Court, Office Decisions


Judge Albright is not “So Unreasonable or Egregious”

by Dennis Crouch In re Freelancer Ltd. (Fed. Cir. 2021) Here is another mandamus writ coming out of Judge Albright’s Waco Texas courthouse. A basic repeated complaint against Judge Albright is that he appears to work quickly regarding issues that move the case toward trial, but acts more slowly to decide motions to dismiss transfer.  I personally don’t put much weight in this complaint because truthfully he’s deciding all of the issues more quickly than most other judges. This case: August 2020...
Tags: Law, Patent, Freelancer, Aurora, Albright, Federal Circuit, Waco Texas, Kinesis, Dennis Crouch, In re Freelancer Ltd Fed, GreatGitz, Twombly Iqbal, Amazon Elasticache


101: Extending Uncertainty to All Fields

by Dennis Crouch It appears that we have not yet seen the most invasive nature of contemporary patent eligibility doctrine.  Case in point: Yu v. Apple Inc. (Fed. Cir. June 11, 2021) [Yu vs Apple]. Yanbin Yu and Zhongxuan Zhang are the inventors and owners of U.S. Patent No. 6,611,289 (‘Digital cameras using multiple sensors with multiple lenses’).  The pair sued Apple and Samsung for patent infringement, but the district court dismissed the cases for failure-to-state-a-claim.  In particular, t...
Tags: Apple, Law, Samsung, Patent, Yu, Newman, Taranto, Federal Circuit, Prost, Dennis Crouch, Apple Inc Fed Cir, Yanbin Yu, Zhongxuan Zhang


Involving Patent Issues vs. Arising Under the Patent Laws

Federal Circuit sends Walker-Process* Antitrust Litigation to Fifth Circuit. The case arose under antitrust law, not patent law. Chandler v. Phoenix (2021). * antitrust claim based upon enforcement of patent procured by fraud. 382 U.S. 172 (1965).https://t.co/X2C2cxkrWM pic.twitter.com/AJElMcZhjS — Dennis Crouch (@patentlyo) June 10, 2021 Google v. Oracle was appealed to the Federal Circuit because the case included patent claims (that were not appealed). The patent claims went to trial...
Tags: Google, Law, Oracle, Patent, Phoenix, Chandler, Federal Circuit, Dennis Crouch


Changes to the Rules of Ethics for Patent Law Practitioners

by Dennis Crouch The professional conduct of US patent attorneys and agents are governed by the rules regarding “Representation of Others before the United States Patent and Trademark Office” found in the Code of Federal Regulations, Title 37, Part 11. 37 CFR 11.1 – 11.901.  Patent attorneys are also regulated by the rules of professional conduct of their home states.  Although there are some patent specific differences, the USPTO has been shifting its rules to be more in line with the ABA’s Mod...
Tags: Law, US, Uspto, Patent, Aba, United States Patent and Trademark Office, Dennis Crouch


A Swarm of Gnats and Injury-In-Fact

by Dennis Crouch A swarm of gnats (midges) can be annoying.  Although each bug is almost too small to be seen or felt, 20,000+ of the critters buzzing around can cause some to panic or at least release a curse.  I’d advise you to just act gnaturally. But imagine for a second that you are able to capture two of the creatures that were part of the swarm.  Are you then able to pass judgment on those two captured individuals for the harm of the swarm?  Will killing those two gnats provide any relief...
Tags: Apple, Supreme Court, Law, Medimmune, Qualcomm, Patent, Apple Inc, Fed, Federal Court, Qualcomm Inc, Federal Circuit, Adkins, IPR, Genentech Inc, Dennis Crouch, En Banc