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Milton’s insight into the clarity of hindsight rings true centuries later. The solution to even a thorny problem seems easy once the solution is revealed. Patent examiners have the difficult task of seeing the solution to a problem in the form of an inventor’s patent disclosure, and then needing to pretend they did not see it. The examiner must accelerate Doc Brown’s DeLorean to 88 mph and travel back to a time just before the applicant’s initial filing to evaluate whether the now-claimed invention would have been obvious to a person of ordinary skill. The examiner may not use insights gleaned from the inventor’s disclosure to form an opinion.

Most scientists and engineers I know would rather suffer a root canal procedure than try to decipher a handful of patents. I’m here to convince you that patent reading need not require Tylenol® with codeine. It’s a matter of having the right approach. In particular, how you read a patent should depend on why you’re reading.

New inventors, and sometimes seasoned ones, are often surprised (or horrified) to learn that getting a patent does not give them the ability to practice their own invention. After all, they’ve probably waited two or three years, endured two or more rejections from the Patent Office, and at last have their prize: a granted patent. “What do you mean we can’t practice it?” This is probably the most common of all misconceptions about patents.

On March 16, 2013, the United States will become a “first inventor to file” patent system instead of a “first to invent” system. Until now, the U.S. awarded a patent to whoever could demonstrate the earliest completion of an invention rather than whoever won the race to file a patent application. When two inventors claimed the same invention, the Patent Office could use an “interference” proceeding to resolve who actually invented first and was therefore entitled to the patent. With the new law, interferences will eventually go away. The only issue, aside from who filed first, is whether the first filer actually derived the invention from another and is therefore not a true inventor, a rare occurrence.

What do a 370Z® Roadster, a pair of LeBron X’s and a Dream Angels Ruffle Babydoll have in common? In Parallel Networks, LLC, v. Abercrombie & Fitch Co., No. 2012-1227 (Federal Circuit, January 16, 2013), the companies who market them, (Nissan North America, Inc., Nike, Inc., and Victoria’s Secret Direct Brand Management, LLC, respectively), along with seventy-four other defendants, won a patent infringement case at the Federal Circuit involving U.S. Patent No. 6,446,111 of Lowery (“the ‘111 patent”). The case spotlights claim construction, and demonstrates use of the specification in interpreting the claims. In particular, it serves as a reminder of the danger posed by the presence of patent profanity in the specification.

Fluid Catalytic Cracking (FCC) remains a vital unit in refinery operations due to its shear impact on overall refinery profitability. Because of its importance, operation of the FCC must shift to meet changing market demands for particular fuel specifications, or to maximize particular products, such as diesel fuel. Research and development in equipment, catalysts and process are expected to shift to further these goals, with companies who invest research dollars in these areas often seeking to protect such investment by obtaining patent protection.

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.

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. […]

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.

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. […]