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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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BPAI Rejects Claims Under In re Nuijten

Ex parte Wahlbin (BPAI Jan. 13, 2010)

Today the Board of Patent Appeals and Interferences ("BPAI"), in a decision by Administrative Patent Judge Lorin, affirmed a rejection of claims related to a "computer implemented method for estimating liability in an accident."  The patent examiner had rejected the pending claims as obvious in light of a number of prior art references.

While the BPAI affirmed the examiner's rejection on obviousness grounds, it went one step further.  For certain claims, it issued a new ground of rejection.  Specifically, it rejected certain claims as "being directed to non-statutory subject matter."

The claims at issue recited a "computer-readable storage medium comprising program instructions."  The BPAI found, giving these claims their broadest reasonable construction, the claims encompassed "a signal."  The BPAI also stated its construction was consistent with the specification, "which describes that the computer readable storage medium includes '…signals such as electrical, electromagnetic, or digital signals …'"  Citing In re Nuijten, the BPAI explained that "[a] signal does not fit within at least one of the four statutory subject matter categories under 35 U.S.C. 101."


The New Patent Marking Police: Answering Clontech and Forest Group

Today, Hal Wegner and I have released a new paper concerning the open questions regarding Section 292 false marking claims post-Forest Group.  We discuss the Forest Group case itself, the history of qui tam actions going back to the middle ages, pending appeals and district court cases, and open questions in light of the Forest Group decision.  Open questions include how to deal with marking products with multiple patent numbers, advertising as false marking, false marking for an unpatented but "patent pending" invention, and the scope of trial court discretion for the appropriate false marking penalty.  Interestingly, in the pending appeal concerning alleged false marking of 21 billion Solo Cup lids, the penalty for such marking may range from $21 million to over $10 trillion dollars under the Federal Circuit's formula.

The paper can be found here.

Gray on Claims has recently added a new feature to track these newly filed false marking cases, as well as those filed prior to the Forest Group decision.  Up-to-date false marking case information can be found here.


Federal Circuit Affirms Wyeth v. Kappos

Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010)

Today, the Federal Circuit held that extended patent term adjustments under 35 U.S.C. § 154(b) due to PTO delay in prosecution applies on an "A delay + B delay - overlap" basis contrary to the PTO's "greater-of-A-or-B" rubric.

At issue in the case were two Wyeth patents.  Both patents were granted patent term adjustment by the PTO of 462 days and 492 days, respectively under the PTO's interpretation of 154(b).  Wyeth disagreed with the PTO's calculations and argued that the respective adjustments should instead have been 756 days and 722 days.

35 U.S.C. § 154(b) provides for patent term adjustments for certain delays by the PTO.  "A delays" extend the term of the patent one day for each day the PTO does not meet certain examination deadlines (for example, providing a first response to a filed application within fourteen months). "B delays" extend the term of the patent one day for each day issuance of the patent is delayed due to the PTO's failure "to issue a patent within 3 years after the actual filing date of the application in the United States."  "C delays" occur due to delays resulting from interference proceedings.  Section 154 also, as described by the Federal Circuit, "restricts the period of adjustment when any of the 'periods of delay' 'overlap.'"  At issue in this case was the correct way to determine when "A delays" and "B delays" overlap for purposes of the statute.

The PTO had promulgated rules essentially finding that the entire period of "A delay" overlaps with the entire period of "B delay."  Under this interpretation, the PTO had a practice of using "greater-of-A-or-B" rubric wherein the PTO would calculate the "A delay", calculate the "B delay", then use the greater of "A" or "B" delays in its patent term adjustment calculations.  Wyeth disagreed with the PTO's interpretation of the statute, arguing that under the PTO's interpretation, "B delay" actually starts upon the filing of the patent application and not three years after the filing date, as specifically set forth in 35 U.S.C. § 154(b).  In Wyeth's interpretation, "A delay" and "B delay" can only overlap once the "B delay" clock has started (i.e. three years after filing of the patent application).

Despite the PTO's argument that Chevron deference applied to its interpretation of 154(b), the district court held that Chevron was inapplicable and sided with Wyeth's interpretation of the statute.  Further, the district court found that even if Chevron applied, it would have rejected the PTO's interpretation as contrary to the plain language of the statute.

The Federal Circuit affirmed, finding that the terms "periods of delay" and "overlap" in the statute contained no ambiguity and that "this court can easily detect any overlap by examining the delay periods covered by the A and B guarantees."  The Federal Circuit further stated that 154(b) "makes it clear that no 'overlap' happens unless the violations occur at the same time … [and] [b]efore the three-year mark, no 'overlap' can transpire between the A delay and the B delay because the B delay has yet to begin or take any effect.  If an A delay occurs on one day and a B delay occurs on a different day, those two days do not 'overlap' under section 154(b)(2)."

The PTO argued that "A delays" inherently cause "B delays" (as a delay early in prosecution may result in the patent not being granted in three years) and therefore the PTO's use of "greater-of-A-or-B" in its patent term adjustment calculations was proper as Wyeth's interpretation may cause "double counting" of days.  The Federal Circuit responding by stating that it "perceives potential perverse results as well under the PTO's suggested interpretation … [however] [r]egardless of the potential of the statute to produce slightly different consequences for applicants in similar situations, this court does not take upon itself the role of correcting all statutory inequities, even if it could.  In the end, the law has put a policy in effect that this court must enforce, not criticize or correct." 

The Federal Circuit also agreed with the district court that Chevron deference to the PTO was not applicable here as "the language of the statute itself control this case and sets an unambiguous rule for overlapping extensions, this court detects no reason to afford special deference to the PTO's interpretation."

It will be interesting to see how the PTO responds to this decision for pending requests for patent term adjustment and how this decision affects patent application strategies given how the PTO is treating Requests for Continued Examination (see PTA Strategies: Wyeth, RCE's and the PCT by C. Edward Polk, Courtenay C. Brinckerhoff and Harold C. Wegner).


Means-Plus-Function Claim Element Does Not Cover "Spectrum of Undisclosed Structures"

Restaurant Techs. Inc. v. Jersey Shore Chicken (Fed. Cir. Jan. 6, 2009) (nonprecedential)

In this case, the district court granted summary judgment of noninfringement of certain patent claims directed to a system for the distribution, filtering, removal, and disposal of cooking oil for use in restaurant fryers.  The Federal Circuit, in a nonprecedential opinion by Judge Lourie, affirmed.

At issue in this case were the claim constructions of three terms.  Two of these terms were written in means-plus-function format.  Of particular note was the construction of the term "control means for selectively operating said filtering, waste supply and fryer valve means and for selecting a pipe path between a predetermined pair of said stations."  The district court had found that this element had the function of "(1) selectively operating the filtering, waste, supply, and fryer valve means, and (2) selecting a pipe path between a predetermined pair of station," with corresponding structures of "a manual system of push-pull knobs, or a partially or completely automated system comprised of microprocessor controls."

Plaintiff argued on appeal that "the specification indicated that push pull knobs and microprocessors were two ends of a spectrum of claimed structures that perform the claimed function, and that the [district] court improperly allowed only those embodiments at either end of the spectrum."

The Federal Circuit found that the patent did specifically disclose the structures of "a series of push-pull knobs and of a partially or completely automated system of microprocessor controls."  However, the Federal Circuit also explained that "[s]ection 112, paragraph 6, only allows the patentee to claim structure that is disclosed in the specification … [t]hus, there is no spectrum of undisclosed structures covered by the patent[-in-suit].  Rather, the patent covers only those structures that are disclosed and their equivalents."

Ultimately, the Federal Circuit agreed with the district court and affirmed summary judgment of noninfringement.

This decision provides an good example of the potential dangers of means-plus-function claiming.


Top Ten Posts From 2009

Below are the ten most-viewed Gray on Claims posts from 2009.  Popular posts from the last year include my joint study with Hal Wegner concerning increasing domination of the patent system and posts summarizing local patent rules affecting claim construction.

  1. Top 150 "Customers": Increasing Domination of the Patent System (link)
  2. Summary of Local Patent Rules Affecting Claim Construction Practice (link)
  3. Patentee Describing Single Embodiment as "The Present Invention" Leads to Narrow Claim Constructions (link)
  4. Federal Circuit Construes Term Found in Specification but Not in the Claims (link)
  5. Federal Circuit Uses Claim Differentiation, Declines Limiting Claim Scope to Preferred Embodiment (link)
  6. Federal Circuit Holds That False Marking Statute Applies on a Per Article Basis (link)
  7. BPAI Uses Dictionary Published Six Years After Filing Date in Rejecting Claims (link)
  8. Northern District of Illinois Proposes Patent Rules Affecting Claim Construction Practice (link)
  9. Prosecution History Used to Limit Method Claim to Performing Steps in Specific Order Claimed (link)
  10. (tie) BPAI Holds Term Indefinite and Summarizes Reasoning Behind Broadest Reasonable Interpretation Rule (link)
  11. (tie) Google Creates its Own Dictionary: Will it be Used by Patent Practitioners? (link)

District Court Requires Defendant to Pay Fees for Supplemental Markman Briefing

Northbrook Digital, LLC v. Vendio Servs., Inc. (D. Minn. Dec. 28, 2009)

In this case, the U.S. District Court for the District of Minnesota required that defendant pay reasonable fees incurred by plaintiff for supplemental claim construction briefing.  The parties submitted a joint claim construction statement in April 2009 and submitted an amended joint claim construction statement in late July 2009.  The defendant then "argued for claim constructions [in its early November 2009 Markman brief] that varied (in some cases significantly) from the constructions offered" by the defendant in the previous joint claim construction statements.  At the Markman hearing, when asked by the Court about this issue, the defendant "failed to provide satisfactory explanation for having changed its claim-construction positions in the roughly three months between late July and early November."

The Court stated in its opinion that it "disapprove[d]" of defendant's behavior and defendant "made the Court's claim construction task more difficult than it already was."  As the Court "could benefit from further briefing" on certain claim construction issues and the defendant's "misbehavior has made this additional briefing necessary, [defendant] should pay for it."

Thanks go out to the Docket Report blog for its initial reporting of this case.


Federal Circuit Holds that False Marking Statute Applies on a Per Article Basis

Forest Group, Inc. v. Bon Tool Co. (Fed. Cir. Dec. 28, 2009)

In a decision released today, the Federal Circuit held that penalties associated with violation of 35 U.S.C. § 292, which relates to false marking, should be imposed on a per article basis.

Plaintiff had sued defendants for infringing plaintiff's patent relating to an improved spring-loaded parallelogram stilt commonly used in construction.  Defendants counterclaimed alleging false marking, a Lanham Act violation, and seeking declaratory judgment that the patent was invalid.  In February 2007, the district court construed the patent claims.  In August 2007, the district court granted summary judgment of noninfringement in favor of defendants.  After holding a bench trial on defendants' counterclaims, the district court determined that plaintiff had falsely marked its "S2 stilts" with the number of the patent-in-suit after November 15, 2007 and assessed plaintiff a $500 file for a single offense of false marking.  Defendants appealed on numerous issues, including the district court's interpretation of 35 U.S.C. § 292.

Section 292 provides a civil penalty for false marking of goods.  It states: "Whoever marks upon, of affixes to, or uses in advertising in connection with any unpatented article, the word 'patent' or any word or number importing that the same is patented, for the purpose of deceiving the public … Shall be fined not more than $500 for every such offense."  The issue here was the appropriate mechanism for penalizing violations of the statute.

The Federal Circuit held that "the statute's plain language requires the penalty to be imposed on a per article basis."  Plaintiff argued that "the false marking statute should be interpreted to impose a single fine for continuous false marking", citing to a 1st Circuit decision from 1910.  The Federal Circuit distinguished that decision, explaining that the decision related to a different statute and further stating that a single $500 fine for each decision to falsely mark "would render the statute completely ineffective."

The Federal Circuit recognized that recent district court decisions have interpreted the false marking statute in different ways, including use of a single fine for continuous false marking, a time-based approach (i.e. a penalty for each day, week, or month that false marking occurred), or a per-article penalty.  However, the Federal Circuit held that "Section 292 clearly requires a per article fine … [and this interpretation] is consonant with the purpose behind marking and false marking."

The Court also cited to policy considerations in support of its statutory interpretation, stating "[a]cts of false marking deter innovation and stifle competition in the marketplace … [i]f an article that is within the public domain is falsely marked, potential competitors may be dissuaded from entering the same market … [and] [f]alse marking can also cause unnecessary investment in design around or costs incurred to analyze the validity or enforceability of a patent whose number has been marked upon a product with which a competitor would like to compete."

While plaintiff argued that this interpretation would encourage "a new cottage industry" of false marking litigation by plaintiffs who have not suffered any direct harm, the Federal Circuit explained that the false marking statute "provides that '[a]ny person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States' .. [and thereby] explicitly permits qui tam actions."  Further, the statue provides for a fine of "not more than $500 for every such offense" and the Federal Circuit stated "[b]y allowing a range of penalties, the statue provides district courts the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities.  In the case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty."

As the district court used a different interpretation of the false marking statute and did not determine the number of articles falsely marked by plaintiff or the amount of penalty to be assessed per article, the Federal Circuit vacated the $500 fine imposed by the district court and remanded the case.

Gray on Claims has recently added a new feature to track these newly filed false marking cases, as well as those filed prior to the Forest Group decision.  Up-to-date false marking case information can be found here.  Additional coverage of false marking cases on this blog can be found here.



Northern District of California Invalidates 3D Computer Graphics Claims Under Bilski, Prometheus

Fuzzysharp Techs. Inc. v. 3D Labs Inc., No. C 07-5948 SBA (N.D. Cal. Dec. 11, 2009)

The Northern District of California, in an opinion by Judge Armstrong, has invalidated various claims of two patents directed to improving 3D computer graphics "through provision of an improved method for performing visibility calculations" as not directed to patentable subject matter under In re Bilski

Defendant argued in its summary judgment brief (no oral argument was heard by the Court) that the relevant claims were no more than "mathematical formulas and algorithms that fail Bilski's machine-or-transformation test."  Plaintiff countered by arguing that, while the claims at issue were not transformative, they were "tied to a particular machine; to wit, a computer."

The Court found that plaintiff's argument "miss[ed] the mark.  The salient question is not whether the claims are tied to a computer.  Rather, as Bilski makes clear, the question is whether the claims are 'tied to a particular machine.'" (emphasis in original).  The Court explained that "[c]ourts applying Bilski have concluded that the mere recitation of 'computer' or reference to using a computer in a patent claim [is] insufficient to tie a patent claim to a particular machine … [l]ikewise, the PTO Board of Patent Appeals and Interferences has reached the same conclusion, and consistently ruled that the mere fact that a claim references the use of a computer is, standing alone, insufficient to meet the machine implementation requirement." (emphasis in original).  Finding the disclosed authorities persuasive, the Court held that the while the claims at issue may be "performed on a computer," they were not "tied to any particular machine."  The Court therefore invalidated the claims as not directed to patentable subject matter.


Google Creates Its Own Dictionary: Will it Be Used by Patent Practitioners?

As reported this morning by Mashable, Google "has offered word definition via the define:word search query for quite some time now" but now has "quietly rolled out" its own dictionary, which can be found at

Google's dictionary includes definitions in 28 languages and also includes related phrases and aggregated definitions from other Web services like Wikipedia.  As noted by Mashable, "similar services such as or surpass Google's dictionary when it comes to features, offering a thesaurus, synonyms, and definitions from specialized sources such as medical and scientific dictionaries … [however] Google's aggregation feature makes its service a good starting point, even if it's not the best dictionary out there."

It will be interesting to see whether Google's new dictionary can become a resource for patent prosecutors and litigators in the future.  Presently, Google's dictionary only appears to offer "current" definitions of terms and, at least as of yet, has no service that shows how definitions have changed over time.  Such a service would be useful to practitioners looking for specific definitions at particular points in the past.  However, to those practitioners wanting to get a general sense of what a specific term may presently mean, Google's dictionary could be a "good starting point" given its aggregation feature.  Hopefully, Google's aggregation feature can eventually expand into including medical, scientific, and other dictionaries so it can become a better resource.

Do you plan on using Google's dictionary or other online dictionaries in your practice?  Please send any comments to


Federal Circuit Finds Specific Case Where Claims Need Not be Construed Before Determining Validity

Perfect Web Techs., Inc. v. InfoUSA, Inc. (Fed. Cir. Dec. 2, 2009)

In this case, the Federal Circuit affirmed the district court's summary judgment order regarding obviousness.  The patent at issue related to methods of managing bulk e-mail distribution to groups of targeted customers.  After the district court conducted a Markman hearing, but before issuing a formal claim construction order, the court held a summary judgment hearing.  The court then granted the defendant's motion for summary judgment of obviousness, assuming for purposes of the motion that the plaintiff's proposed claim constructions were correct.  On appeal, the plaintiff argued that the district court should have formally construed the claims before deciding validity.

The Federal Circuit, in an opinion by Judge Linn, noted that it has previously said "a court may not invalidate the claims of patent without construing the disputed limitations of the claims and applying them to the allegedly invalidating acts … [h]owever, a district court need not construe undisputed claim terms prior to issuing a summary judgment of invalidity." (emphasis in original, internal citations omitted).  In this particular case, the parties disputed two claims terms found in the final step of the claimed four-step method.  However, both the district court and Federal Circuit found that "[n]either claim term was relevant" to the issue of obviousness (the issue being the repeating of the first three method steps).  The plaintiff offered no reasons why the constructions of these two terms would change the obviousness outcome.

Plaintiff also argued that the district court "adopted an improper 'claim construction' that oversimplified the claims" by referring to the final step of the claimed method as "try, try again" (the final step of the claimed method called for repeating the first three steps until a condition was satisfied).  The Federal Circuit disagreed, noting that "step (D) plainly calls for 'repeating steps (A)-(C),' and [plaintiff] identifies no construction that would change our analysis."