Category: Technology Patents

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Can Filing a Patent Infringement Suit Hurt You in a Re-Exam?

Written by Mark Terry I came upon a super interesting Board of Patent Appeals and Interferences (BPAI) decision issued today. I found the Smucker v. Mack-Ray case interesting for both educational and entertainment reasons. The decision involves the effect an infringement action may have on a re-exam. But the BPAI used uncharacteristically harsh words to reject the Appellant’s arguments, which made it amusing. It’s rare to see any emotion in a BPAI decision, so when you see Jones Day get a verbal spanking, you can’t help but write about it. In the Smuckers v. Mack-Ray case, the patent owner had sued the defendant for patent infringement

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Are terms of “degree” indefinite claim language under 35 U.S.C. 112?

Written by Mark Terry Terms of degree – such as “easily,” “readily,” and “aesthetically pleasing” – can be subjective and therefore problematic when used as claim language. But the recent Federal Circuit decision of Hearing Components, Inc. v. Shure Inc., 600 F. 3d 1357 (Fed. Cir. 2010) provides some guidelines on how to properly use terms of degree in claim language without worrying about a 35 U.S.C. §112 indefiniteness rejection. As a Florida Patent Attorney, I write claims almost every day, so this case is topical for me. Under 35 U.S.C. § 112, second paragraph, the “specification shall conclude with one or

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Undue Experimentation Rejection Reversed in Biotech Patent Appeal

Written by Mark Terry Another recent decision by the Board of Patent Appeals and Interferences (BPAI) overturned a rejection by a patent examiner who attempted a 35 U.S.C. §112 rejection of a biotechnology invention that discloses a method for killing malignant melanoma cancer cells (Ex parte Chada). As a Miami-based Board Certified Intellectual Property Attorney, I continuously review new BPAI decisions so that I can skillfully draft proactive and intelligent patent applications based on the latest patent office holdings for my clients. Geneticist Sunil Chada applied for a patent that describes a technique for activating a gene in Melanoma cancer cells

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BPAI Reverses Patent Examiner For Hindsight Reconstruction

Written by Mark Terry Once again the Board of Patent Appeals and Interferences (BPAI) reversed a rejection by an overzealous patent examiner who failed to adequately connect the proverbial dots between prior patents in an attempt to disqualify a patent application for approval (Ex parte Kobayashi). As a Miami-based Patent Lawyer I constantly keep abreast of new holdings handed down by the BPAI in order to deliver up-to-the-minute defenses for my clients’ patent applications. The patent applicant in this month’s Kobayashi decision invented a system for recording the progress of video game players as they achieved certain milestones in online (networked) video games. The

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Novel Arguments That Don’t Work Against a 103 Rejection – Florida Patent Lawyer Blog

Written by Mark Terry In it’s first decision of the day this sleepy Monday morning, the Board of Patent Appeals and Interferences (BPAI) rejected a novel “market forces” argument in favor of a Patent Examiner’s 35 U.S.C. 103 obviousness rejection. As a Miami Patent Lawyer, I found the Ex parte Scherschel decision interesting because I like to read the novel arguments asserted by patent attorneys when they have a dog of a case. And sometimes the BPAI’s response is even more interesting. The case of Ex parte Scherschel involved an invention related to cell phone communications systems. This case was on re-hearing, which means the

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When does the Patent Practitioner carry the burden of proof?

Written by Mark Terry In the last decision of this past Thursday, the Board of Patent Appeals and Interferences (BPAI) reiterated the rule that attorney argument is not enough to meet certain burdens in course of patent prosecution. As a Board Certified patent lawyer in Miami with a sizable docket of cases, I’m constantly staying abreast of the current state of the law on issues relating to patent prosecution. The Patent Examiner in the Ex parte Zechlin case asserted that a characteristic of the claimed chemical process was found in a prior art patent. Specifically, the Patent Examiner found the claimed cyclic ketone removal characteristic was

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Patent Reform: Will It Protect Your Inventions?

Written by Mark Terry The Patent Transparency and Improvements Act (Bill, S. 1720), seeks to improve transparency and to remedy problems associated with patent trolls and others that file frivolous lawsuits using their patents. Trolls are turning out to be a formidable opponent to the patent reform process by engaging in some heavy lobbying. Trolls have cost companies billions of dollars due to weaknesses in the patent system. As a practicing patent attorney I walk a fine line between writing a claim that is so broad it is enforceable, and writing a claim that is so narrow, an  infringer can

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How to lose your “ordinary dictionary meaning” argument at the Board of Patent Appeals

Written by Mark Terry Today’s first Board of Patent Appeals and Interferences (BPAI) decision involved an eloquent exposition of the relationship between claim construction and ordinary dictionary meaning. The case of Ex parte Benson involved a 35 U.S.C. 102 rejection of a claim that turned on the construction of the claim term “embedded.” As a Patent Attorney in Miami with a full docket of patent cases, BPAI decisions that involve claim construction are highly topical for me. In Ex parte Benson, the BPAI explored the issue of how the claim term “embedded” should be construed. The Applicant argued the claim term should be given the

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Board of Patent Appeals Rules on “Intended Use” Argument in 102 Rejection

Written by Mark Terry On Friday, the Board of Patent Appeals and Interferences (BPAI) rejected the well-known “intended use” argument in favor of a Patent Examiner’s 35 U.S.C. 102 anticipation rejection. As a Miami Patent Lawyer, I found the Ex parte Crabtree decision interesting because it confirmed my own abandonment of the “intended use” argument in the course of patent prosecution. The Ex parte Crabtree decision involved a claim for a mattress spring that performed a specific task. Specifically, the mattress spring “deflects debris.” The Appellant found a prior art reference that had the same structure as Appellant’s claim, but did not disclose a

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What is the Burden of Proof when practicing before the Board of Patent Appeals? – Florida Patent Lawyer Blog

Written by Mark Terry In short, the answer is “by a preponderance of the evidence.” The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Hochsmann did a good job of highlighting this axiom. As a Miami Patent Lawyer, I found the Ex parte Hochsmann decision interesting because it reminded me of the burden I must carry when I practice before the BPAI. The case of Ex parte Hochsmann involved a chemical process including salt crystals. The principal issue in this appeal was whether Appellant had established that the Examiner erred in finding that the prior art reference would have disclosed a salt crystal. But

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