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Author: Jon Schuchardt

Crazy Like a Fox: Quality of a Disclosure under Section 102(g)

The Fox Group, Inc. v. Cree, Inc. (Fed. Cir., 2012)

What kind of showing must an infringement defendant make to demonstrate a prior invention under Section 102(g), and what must a patentee do to show that the prior inventor abandoned, suppressed, or concealed? If the prior inventor makes an oral presentation and publishes a paper mentioning the composition but not revealing how to make it, is that enough? In The Fox Group, Inc. v. Cree, Inc., decided November 28, 2012, the Federal Circuit affirmed the U.S. District Court for the Eastern District of Virginia, which granted summary judgment of patent invalidity in favor of Cree. The panel disagreed about whether Fox met its burden of production on the abandon/suppress/conceal issue, but I think dissenting Judge Kathleen O’Malley has the more wily view.

Ambiguity is in the Eye of the Beholder: Exelixis v. Kappos

I never promised you any money.

The words could not be plainer: “I never promised you any money.” The meaning is clear and unambiguous, right? Ask six people to read the sentence, however, each in turn emphasizing the first, second, third, fourth, fifth, or sixth word, and you’ll quickly agree that multiple meanings are possible from even this simplest of sentence constructions. “I never promised you any money” (she did, but I didn’t); “I never promised you any money” (your sister, maybe, but not you); “I never promised you any money” (a return favor maybe, but no cash). You get the idea. […]

Of Cold Cheesesteaks and Disrespected Apostrophes: In re Campo’s Deli at Market, Inc.

The confusion of the possessive “its” (no apostrophe) with the contractive “it’s” (with apostrophe) is an unequivocal signal of illiteracy and sets off a simple Pavlovian “kill” response in the average stickler.
-Lynne Truss, Eats, Shoots & Leaves

Earlier this year, I visited Philadelphia’s Wells Fargo Center to watch a struggling 76ers team lose to the New York Knicks. Annoyingly, the crowd was mostly boisterous Knicks fans, many sporting Carmelo Anthony jerseys. Before the game, I stood in line at Campo’s waiting for a hot-off-the-grill cheesesteak. As I watched thin-sliced beef sizzle on the grill, I confess I may have drooled a bit. My $10 sandwich turned out to be cold, however, apparently cooked and wrapped much earlier. Bait-and-switch or just bad luck? With that experience behind me, you’d think that I’d rejoice at the Trademark Trial and Appeal Board’s recent decision to deny Campo’s Deli at Market Inc.’s application to register “Philadelphia’s Cheesesteak.” Actually, however, I think the PTO slid Campo’s a “cold sandwich.” You see, like Lynne Truss, author of Eats, Shoots & Leaves, a remarkable little treatise on punctuation, I believe the apostrophe deserves more respect.

Intent to Deceive: A High Hurdle Post-Therasense

1st Media, LLC v. Electronic Arts, Inc., et al. (Fed. Cir., 2012)

I have a soft spot for karaoke. It’s not that I can sing; my voice is suitable for use only in the shower or on a riding lawn mower. However, I did meet my wife on a blind date at a local restaurant on a Thursday evening that turned out to be Karaoke Night. The good news is that we got married in spite of our exposure to off-key renderings of hits by Neil Diamond, Kool & the Gang, and Madonna.

1st Media, LLC owns U.S. Pat. No. 5,464,946, which relates to an entertainment system for use in purchasing and storing songs, videos, and multimedia karaoke information. 1st Media sued Electronic Arts, Inc. and others in Nevada District Court for patent infringement. […]

The Enablement Requirement: A Limit on Greed

Magsil Corporation v. Hitachi Storage Technologies (Fed. Cir., 2012)

Thus we descended into the fourth chasm,
Gaining still farther on the dolesome shore
Which all the woe of the universe insacks.
–The Inferno, Canto VII, Dante Alighieri

Although patent validity is more frequently challenged on the basis of uncited or ill-considered prior art, Section 112 issues, including the requirement of an enabling disclosure, are underutilized as a basis of attack […]

Wrigley and Cadbury Adams Get Chewed

Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC (Fed. Cir., June 22, 2012)
Chewing gum has come a long way since, as a youth, I opened a pack of Juicy Fruit® gum just to inhale its marvelous aroma. As a law student, I felt unprepared for class without a stick or two of Doublemint® gum to calm the nerves and sharpen the brain. Then came the rivals to challenge Wrigley with creatively packaged products iced with the latest . The chewing gum wars began in earnest. This battle pits heavyweight Wrigley against upstart Cadbury Adams.

Unsanctioned by the Victim: The High Cost of Hindsight Reconstruction

Hindsight reconstruction at the hands of a well-meaning patent examiner has victimized many a patent applicant. The examiner has a daunting task. He or she must review a new disclosure and claims, quickly grasp the nature of the invention, search for related prior art, and then (metaphorically) hop into the nearest flux capacitor-modified DeLorean, punch in the time, and accelerate to 88 mph […]

Claim Construction: One Hole of a Mess

On April 3, 2012, the Federal Circuit ruled (2 to 1, opinion by Judge Lourie) that a district court (N.Y., N.D.) incorrectly granted summary judgment of noninfringement in favor of J&L Fiber Services, Inc. (“J&L”). Advanced Fiber Technologies (“AFT”), owner of U.S. Pat. No. 5,200,072 and RE 39,940, sued J&L after it began selling its V-Max wedgewire screens for use in paper and pulp processing.

Please Hold the Mayo

It’s not that I despise mayonnaise or fear saturated fat; I just like less of the white goo than most teenage burger jockeys like to apply. I must admit, however, that the Supreme Court’s sticky ruling in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __ (2012), gave me indigestion.

When a Genus Anticipates

The Court of Appeals for the Federal Circuit recently ruled (ClearValue Inc. v. Pearl River Polymers Inc., Fed. Cir., No. 2011-1078, Feb. 17, 2012) that a genus anticipates a species, at least sometimes. We all learned once that disclosure of a species will anticipate a later-claimed genus. However, the converse is usually not true. In ClearValue, the Federal Circuit reversed a district court (Texas, E.D.) ruling and invalidated ClearValue’s patent claim. It held that a generic disclosure anticipates a species claim, even if the reference discloses no example within the claimed range, unless the patent owner can show that the clamed range is somehow “critical” or that the examples of the claimed range “work differently.”