What types of process inventions are eligible for patent protection?
The Patent Statute defines patent eligible subject matter as any new and useful process, machine, manufacture and composition or improvement thereof. 35 U.S.C. § 101. Recently, the Federal Circuit (i.e., the appeals court for all patent matters) decided the case of In Re Bilski which clarifies the types of useful processes that are eligible for [...]
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WILLFULNESS; WAIVER OF ATTORNY-CLIENT PRIVILEGE AND WORK PRODUCT DOCTRINE
Under Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), when a potential infringer has actual notice of another’s patent, the potential infringer had an affirmative duty to exercise due care to determine whether or not he is infringing. In In re Seagate Technology LLC, 83 USPQ2d 1865 (Fed. Cir. 2007) (en [...]
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Patentable Subject Matter
§ 101 of the patent act limits the grant of a patent to patentable subject matter. In the broadest sense of patentable subject matter, anything under the sun made by man is patentable subject matter. However, § 101 excludes from patentable subject matter abstract ideas such as mathematical algorithms unless the claim is presented in [...]
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- Posted in: Patent Eligible Subject Matter
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Doctrine of Equivalents – BINGO
In Planet Bingo LLC v. GameTech International Inc., 81 USPQ2d 1145 (Fed. Cir. 2006), the Federal Circuit upheld the District Court’s decision of non-infringement under the Doctrine of Equivalents because determining a winning combination after a first ball in a bingo game is drawn is substantially different from determining a winning combination before drawing the [...]
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- Posted in: Doctrine of Equivalents
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Means plus function without the MEANS trigger
Means plus function language in a claim appears to be a broad form of claiming one’s invention. However, Congress by statute has limited the breadth of these types of limitations to those embodiments disclosed in the patent application which are linked to the means plus function limitation plus their equivalents. As a result, the means [...]
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- Posted in: claim drafting, means plus function
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Supreme Court Broadens Obviousness
Justice Kennedy writing for a unanimous Supreme Court, directed the Federal Circuit to broaden the test of obviousness under 35 U.S.C. § 103 back to its original framework as set out in Graham v. John Deere, Co. of Kansas City, 383 U.S. 1 (1966); Hotchkiss v. Greenwood, 11 HOW. 248 (1851); and its progeny. Before [...]
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Utilizing Essential Elements and Recapture For Claim Construction
The invention of the patent-at-issue is directed to safety syringes which prevent or mitigates accidental needle prickings by medical professionals. On appeal, the patentee contended that the District Court’s claim construction of the terms “immediately”, “relative movement” and “slidably receiving” was in error. The District Court construed “immediately” to require the activation of a blocking [...]
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- Posted in: essential elements, recapture
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Process Claims Directed To New Purpose
In Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001), Bristol-Myers patented a method of administering the drug Paclitaxel for antitumor purposes. A competing drug manufacturer (i.e., Ben Venue Labs, Inc.) challenged the validity of the patent based on a prior art reference by Kris which disclosed the method of [...]
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- Posted in: Patent Eligible Subject Matter
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Patent marking
Under US Patent Marking Statute, patentees may give constructive notice to the public by indicating on the product the word “patent” or “pat.” together with the number of the patent. If the patent number cannot be marked on the product itself, then such marking may be provided on the insert or label associated with the product. By doing so, damages can be calculated from the start of infringement, instead of from actual notice (e.g., receipt of a cease and desist letter or service of a complaint). The issue in Soverain Software LLC v. Amazon.com Inc is whether a website is a product that can be marked. The Court held that tangible items which can be marked must be marked if possible to take advantage of the patent marking statute.
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- Posted in: patent marking, virtual patent marking
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Transitional Phrases – Claim Construction
On August 17, 2006, the Federal Circuit decided Conoco, Inc., et al. v. Energy & Environmental International, L.C., et al., Fed. Cir., No. 05-1363, 8/17/06. The patent in suit relates to a drag reducing agents injected into oil and gas pipelines such that more liquid may be pumped more efficiently. The claim recited a process [...]
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- Posted in: claim construction
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