Patent – Claim Construction

USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels)

The Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), revised the standard for finding a patent indefinite under 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)).  In the wake of this decision, it was unclear whether the U.S. Patent and Trademark Office (PTO) would change its long-held standard for applying indefiniteness rejections during original patent application examination, based on Nautilus.  The PTO’s Patent Trial and Appeal Board (PTAB) recently issued a rare precedential decision, announcing that the PTO’s examination standard will not change. READ MORE

No “Last Resort” Striking of Undisclosed Expert Opinion

Order Granting-in-Part Motion to Strike Declaration of Miguel Gomez, VIA Techs., Inc. et al. v. ASUS Computer Int’l, et al., Case No. 14-cv-03586 (Magistrate Judge Paul Grewal)

In a recent order in VIA Techs., Inc. v. ASUS Computer Int’l, Magistrate Judge Grewal Court found VIA’s expert disclosures insufficient under the “straightforward” claim construction process of the Northern District’s Patent Local Rules. Despite VIA’s failure to strictly comply with the rules, the Court rejected the “last resort” penalty of striking the expert’s testimony altogether, and instead granted ASUS additional deposition time to inquire into his opinions. In so ruling, the Court considered the “relative banality” of the undisclosed opinions and the weeks remaining before the claim construction hearing. READ MORE

The “Pot, Kettle, Black” Doctrine

“Oho!” said the pot to the kettle;
“You are dirty and ugly and black!
Sure no one would think you were metal,
Except when you’re given a crack.”

-Anonymous (excerpt)

The adage “the pot calling the kettle black”—referring to someone who is guilty of the very thing that he accuses another of—is a bit of equitable common sense that practitioners ought not to forget. READ MORE

Access to Continued Litigation Denied: Method for Intrusion Detection Found Invalid Under Section 101

Order Granting Motion for Judgment on the Pleadings, Protegrity USA, Inc., et al. v. Netskope Inc., Case No. 15-cv-02515-YGR (Judge Yvonne Gonzalez Rogers)

The NorCal IP Blog has extensively covered the increasing popularity of 35 U.S.C. §101 motions post-Alice, most recently here. In Protegrity, Judge Rogers continued the trend of increased judicial scrutiny of software patents in granting Netskope’s motion for judgment on the pleadings under FRCP 12(c). Judge Rogers granted the motion without the benefit of Markman proceedings or substantial discovery, just eight months after Protegrity filed its complaint. READ MORE

CLAIM CONSTRUCTION “GAMESMANSHIP”? Quantum Corporation’s Expert Ordered To Sit For Further Deposition On Claim Construction

Order Re Crossroads’ Motion To Strike, Quantum Corporation v. Crossroads Systems Inc., Case No. C 14-04293 WHA (Judge William Alsup)

Expert witnesses are often used during patent claim construction to offer extrinsic evidence relevant to the meaning of claim terms, such as how one skilled in the art would have understood the terms at the time of the invention. Yet, experts must be careful to avoid offering opinions on the ultimate meaning of claim terms, which is a question of law. This is a subtle balance that can be tricky to carry out in practice. As Judge Alsup’s recent opinion makes clear, an expert must be careful not to cross the line into “gamesmanship” territory when parsing “fact” opinions versus ultimate opinions on claim constructions. READ MORE

Game Over: Plain and Ordinary Construction Results in Summary Judgment

Claim Construction Order and Order Granting Summary Judgment, Segan LLC v. Zynga Inc., 14-cv-01315 (Judge Vince Chhabria)

It is ordinary in patent cases for the patentee to ascribe “plain and ordinary” meaning to claim terms while the defendant seeks narrow, limiting language based on intrinsic evidence (e.g., statements in the patent specification) and/or extrinsic evidence (e.g., dictionary definitions). However, Judge Chhabria’s recent Order demonstrates that accused infringers have the opportunity to effectively turn the tables in certain situations. That is precisely what Zynga did in its litigation with Segan LLC, where the claims’ ordinary language was enough to convince Judge Chhabria that the accused products plainly do not infringe.   READ MORE

March 2015 Recap

March 2015—like January and February—saw decisions on a variety of fronts from ND Cal judges.  ND Cal judges demonstrated their willingness to apply the Supreme Court’s decisions in Nautilus and Alice to invalidate patents on summary judgment.  Nautilus held claims invalid if they “failed to inform, with reasonable certainty, those skilled in the art….”  Judge Alsup applied that reasoning in Aquatic AV, Inc. v. Magnadyne Corp. et al., Case No. C 14-01931, where he found Aquatic’s asserted claims invalid, in part, because the its definition of “hermetically seals” lacked sufficient fixed meeting: “taking our patentee at its word that ‘hermetically seals’ has no fixed meaning.”  READ MORE

HP Fails to Construct a “Concrete” Path to Patentability Under Alice

Order Granting Motion for Summary Judgment, Hewlett Packard Co. v. ServiceNow, Inc., Case No. 14-cv-00570-BLF (Judge Beth Labson Freeman)

Since the Supreme Court decided Alice, district courts have increasingly invalidated patent claims directed to the use of general computers to implement “abstract” ideas.  One strategy for patent owners to demonstrate patent-eligible subject matter [i] and thus survive Alice scrutiny is limiting claim constructions to define the implementing computer structure in a specific, concrete and specialized way.  This is what Hewlett Packard recently attempted, but failed to do, when defendant ServiceNow, Inc. moved for summary judgment of invalidity on the claims in four asserted patents. READ MORE

Shifting Claim Constructions Does Not Make For “Watertight” Claims

Order on Claim Construction and Partial Summary Judgment, Aquatic AV, Inc. v. Magnadyne Corp. et al., Case No. C 14-01931 (Judge William Alsup)

A patent plaintiff typically hates getting boxed into a specific meaning of its patent terms, but every shift in position can leave it more and more exposed to an indefiniteness challenge.  In a dispute over waterproof housings for portable electronic devices, Judge Alsup decided that plaintiff Aquatic AV had crossed the line, noting the “cascade of ever-changing meanings that . . . introduces the very imprecision Section 112 prohibits.”  Applying the Supreme Court’s 2014 Nautilus decision, which held claims invalid if they “fail to inform, with reasonable certainty, those skilled in the art,” Judge Alsup granted summary judgment that the asserted claim is invalid as indefinite.

Defendants had moved for summary judgment of non-infringement and/or invalidity of claims in one of two asserted patents.  Those issues depended on the construction of certain terms. READ MORE

A 2014 Recap

Most mark the beginning of a new year with a moment of reflection on the past year’s follies and lessons learned. In 2014, there were a fair number of lessons learned regarding pleading, discovery, and how to survive a motion to dismiss. To start off 2015, we look back on some of the decisions from the Northern District that were most popular amongst our readership, and the lessons they provide.

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