James Yang

James Yang is a patent attorney whose practice encompasses all areas of intellectual property law including patents, trademarks, copyrights and trade secrets.

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Means plus function presumption lowered to pre-2004 bar

Means plus function presumption lowered to pre-2004 bar

Bottom line: Under Williamson v. Citrix Online (en banc Fed. Cir. 2015), the Federal Circuit, en banc, lowered the standard back to the pre-2004 standard for when a claim limitation is to be construed as a means plus function (MPF) limitation even when the patent drafter did not intend the claim limitation to be construed […]

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Whittling down patent damages below EMV

Whittling down patent damages below EMV

Bottom line: Patent damages for patent infringement can be whittled down in circumstances where the patented invention is directed to only one component of a multi-component system, or the claimed invention contains both conventional and inventive elements.  To increase the damage award, the inventive component or the essential part of the invention should be characterized […]

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Software patents need to drill down to the core algorithms

Software patents need to drill down to the core algorithms

Bottom line: Software patent specifications require disclosure of an algorithm for all means-plus-function limitations.  Otherwise, the claim may be invalid for being indefinite.  The problem may not be related solely to means limitations since a non-means limitation could be impliedly construed as a means-plus-function limitation even without using the trigger word “means.” In Eon Corp, […]

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Abusive tactics backfires with potential attorney fees award

Abusive tactics backfires with potential attorney fees award

Bottom line: The standard for awarding attorney fees was lowered back in 2014 by the Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014).  (Click here for the Highmark case). Before 2014, obtaining an award of attorney fees was fairly difficult, even in egregious situations. Now, under the lowered standard, the tide […]

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Patent Drafting Tip: Alternative embodiments create prior art

Patent Drafting Tip: Alternative embodiments create prior art

Bottom line: An application for patent generally focuses on the preferred embodiments of the invention but it may be prudent to also include alternative non-preferred embodiments. One reason for including these alternative embodiments is to provide a buffer zone around the preferred embodiments of the invention to prevent others from obtaining a patent on these […]

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Patent drafting tip: be noncommittal in the specification

Patent drafting tip: be noncommittal in the specification

Bottom line: Characterizing the invention as “may be” having a particular feature is generally effective in maintaining the breadth of a claim. By being noncommittal, the courts are less likely to import those particular features as requirements into the claims of the patent. Patent claims can be narrowed based on statements made in the specification […]

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3 Basic Concepts of Patent Infringement

3 Basic Concepts of Patent Infringement

A patent is a right of the patent owner to exclude others from making, using, selling, offering for sale and importing the invention into the United States.  A patent provides: an exclusionary right, not a right to do something; a remedy only for specific actions of others that infringe the exclusionary right; protection only in […]

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Fickleness of patent litigation turns on a single letter in claim

Fickleness of patent litigation turns on a single letter in claim

Bottom line: The Federal Circuit construed the meaning of a phrase (i.e., a contact hole) which typically is construed to mean “one or more” to mean “two or more.” This case illustrates the fickleness of patent litigation and how the entire case could turn on not only one phrase in the claims but the varying […]

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Patent exhaustion not implicated in licensing different aspects

Patent exhaustion not implicated in licensing different aspects

Bottom line: Claim sets that include independent claims directed to different types of entities (e.g., manufacturer v. end user, receiver v. transmitter, method v. apparatus) may enable the patent owner to license its patents to one entity without implicating patent exhaustion for a different entity. In Helferich v. NY Times (Fed. Cir. 2015), the patent […]

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Using the word “invention” may narrow your patent protection

Using the word “invention” may narrow your patent protection

Bottom line: It  may be counter-intuitive, but use of the word “invention” when drafting a patent application is a disfavored practice.   For the most part, use of the word “invention” may narrow the patent protection afforded under a patent and may not broaden the scope of the claims.  The reason is that if a patent repeatedly […]

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James Yang is an Orange County patent lawyer and welcomes potential clients throughout California including Orange County, Riverside County, Los Angeles, San Diego, Santa Ana, Irvine, Orange, Anaheim, Newport Beach, Huntington Beach, Tustin, Brea, Fullerton, Buena Park, Mission Viejo, Lake Forest, Laguna Niguel, Stanton, San Clemente, Laguna Hills, Laguna Niguel, Cypress, Laguna Beach, Coto de Caza, Costa Mesa, Aliso Viejo, Ladera Ranch, Dana Point and Foothill Ranch.
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