Category Archives: Lessons In Hindsight

YEDA RESEARCH AND DEVELOPMENT CO., LTD., v MYLAN PHARMACEUTICALS, INC., decided October 12, 2018, Prior Art

U.S. Patent Nos. 8,232,250, 8,399,413, and 8,969,302 are directed to higher dose (40mg v. 20mg) and less frequent injection (3 days a week v. daily) of a drug for multiple sclerosis (pages 3-4).  Prior art is 20 mg daily based on a clinical trial without an optimal dose finding study, but with a note to […]

DATA ENGINE TECHS. LLC v GOOGLE LLC, decided Oct. 9, 2018, Statutory Subject Matter

U.S. Patent Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146 are directed to a user interface with notebook tabs to navigate spreadsheets and other spreadsheet functionality (pages 2-3).  When filed, spreadsheets used complex commands in complex menus or memorization to navigate (pages 3-4).  The “tab” implementation was acclaimed at the time (pages 5-6).  Claim 12 of the […]

NATURAL ALTERNATIVES v. IANCU, decided October 1, 2018, Priority Claim

U.S. Patent No. 8,067,381 is based on a chain of eight US applications – the patent at issue is from the eighth application (page 2).  The cross-reference in the CIP fifth application was amended to delete reference to the first through fourth applications, resulting in claiming priority to just a provisional application filed after the […]

WISCONSIN ALUMNI RESEARCH v. APPLE INC., decided Sept. 28, 2018, Non-Infringement

U.S. Patent No. 5,781,752 is directed predicting data dependency is executing programs out of order (pages 2-4).  Historical mis-predictions inform future predictions (page 6).  The accused devices predict in a way that multiple instructions may update a same prediction (page 7).  Claim 1 requires a predictor that “produces a prediction associated with the particular instruction” […]

POWER INTEGRATIONS, INC. v FAIRCHILD SEMICONDUCTOR, decided Sept. 20, 2108 after rehearing, Non-infringement

U.S. Patent Nos. 6,212,079 and 6,538,908 are directed to power supply controller chips (pages 2-3).   The claims recite a “fixed switching frequency for a first range of feedback signals” and “a multi-function circuit coupled to receive a signal at a multi-function terminal for adjusting a current limit of a power switch” (pages 3-4).  “Fixed switching […]

NOBEL BIOCARE SERVICES AG v. INSTRADENT USA, INC., decided September 13, 2018, claim interpretation and publication

U.S. Patent No. 8,714,977 is directed to dental implants with a frustoconical shape where a diameter of an apical end is larger than a diameter of a coronal end (pages 2-3).  The prior art is a catalog, which was publicly accessible by being available as evidenced by a visitor at a conference having saved a […]

PARKERVISION, INC., v. QUALCOOMM INC., decided September 13, 2018, claim interpretation

U.S. Patent No. 6,091,940 is directed to frequency up-conversion where harmonics due to amplitude modulation are filtered (pages 3-5).  The apparatus claim recites the capability to generate integer harmonics, and the prior art has that capability even if not done (pages 9-10).  The claim recites a switch module to receive an oscillation signal where the […]

INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC., decided Sept. 4, 2018, claim interpretation

U.S. Patent No. 6,640,248 is directed to bandwidth allocation by type of software application.  The specification describes the allocator as being at the data link layer of the OSI standard and using information from the application layer, transport layer, or network layers of the OSI standard (pages 2-4).  The claims recite an “application-aware media access […]

IN RE: MAATITA, decided August 20, 2018, Enablement and Definiteness

Design Application 29/404,677 is directed to a tread for a shoe bottom.  The application has two figures showing a plan view of the shoe bottom (page 2).   The Examiner and board alleged that the design claims were not enabled and indefinite due to lack of other views to determine depth and contour (pages 3-6).  A […]

CORE WIRELESS LICENSING v. APPLE INC., decided August 16, 2018, infringement and interpretation

U.S. Patent Nos. 6,477,151 and 6,633,536 are directed to synchronization between a mobile phone and base station and a mobile receive that can detect unexpected control messages (page 2).  The 151 patent recites receiving “a timing advance value once” (pages 5-6).  This limitation is not receiving one and only one per multi-frame as the claim […]