Category Archives: Lessons In Hindsight

AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS, decided October 3, 2019, Statutory Subject Matter

U.S. Patent No. 7,774,911 is directed to manufacturing driveline propeller shafts with vibration attenuating liners (pages 3-5).  Claim 1 recites tuning the liner for two types of vibrations and positioning that liner within a shaft to provide recited amounts of damping (page 5). Based on interpretation of “tuning,” the claims are directed to controlling mass […]

SIPCO, LLC v. EMERSON ELECTRIC CO., decided Sept. 25, 2019, Covered Business Method

.S. Patent No. 8,908,842 is directed to wireless communications from a remote device (e.g., key fob) to communicate with a central device (e.g., verification server) through two or more hops (e.g., wireless coms from fob, to ATM, to bank server) (page 3). According to the specification, a low power transmitter is used to avoid interference […]

ALLERGAN SALES, LLC v. SANDOZ, INC., decided August 29, 2019, Claim Interpretation

U.S. Patent Nos. 9,770,453; 9,907,801; and 9,907,802 are directed to topical treatment for glaucoma (pages 2-3). A representative claim recites “wherein” clauses regarding efficacy and representative safety (pages 4 and 7). The wherein clauses are more than intended results (pages 7-8). The wherein clauses reflect results from example II taught in the specification (pages 7-8). […]

GUANGDONG ALISON HI-TECH CO. v. ITC, decided August 27, 2019, Indefiniteness

U.S. Patent No. 7,078,359 is directed to an aerogel composite with a fibrous batting (page 3). The claims recite a “lofty fibrous structure” or “lofty batting” (pages 3-4). While lofty is a term of degree, the specification provides an objective boundary (page 10). A “lofty batting” is expressly defined as “a fibrous material that shows […]

CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO. LTD., decided August 21, 2019, Statutory Subject Matter

U.S. Patent No. 7,224,275 is directed to wirelessly communicating information about a moveable barrier (door) (pages 3-4). The only difference between the prior art and claim 1 is that the communication of status information is wireless rather than wired (pages 5-6). The controller, interface, and wireless transmitter of claim 1 are described in the specification […]

MTD PRODS. INC. v. IANCU, decided August 12, 2019, Means-Plus-Function

U.S. Patent No. 8,011,458 is directed to a steering system in a zero turn radius (ZTR) vehicle (pages 2-3). The claim recites a “mechanical control assembly . . . configured to,” which was held to not be a means-plus-function term by the district court (pages 2-3 and 5-7). “Mechanical control assembly” is similar to other […]

IRIDESCENT NETWORKS, INC. v. AT&T MOBILITY, LLC, decided August 12, 2019, Claim Interpretation

U.S. Patent No. 8,036,119 is directed to guaranteed bandwidth on demand (pages 2-4). Claim 1 recites a request for a “high quality of service connection” (page 4).   In prosecution, Applicant cited to disclosure of 1-300 megabits per second, 10^-5 packet loss and less than 1 second latency in the specification as high quality of service […]

SOLUTRAN, INC. v. ELAVON, INC., decided July 30, 2019, Statutory Subject Matter

U.S. Patent No. 8,311,945 is directed to processing paper checks by digital capture of data at the point of purchase to promptly process a deposit with scanning and image capture at a different location and later matching the captured data to the captured image (pages 2-4). The PTAB had denied a 101 challenge in a […]

AMGEN, INC. v. COHERUS BIOSCIENCES INC., decided July 29, 2019, Arguement-based Estoppel

U.S. Patent No. 8,273,707 is directed to purifying proteins using HIC (pages 2-3). In prosecution, the applicants argued that combination and a particular combination of salts is not taught in the prior art (pages 4-5). A declaration discussing the particular combination as being beneficial was submitted during prosecution (page 5). Due to argument-based prosecution history […]

SAMSUNG ELECTRONICS CO., LTD. v. INFOBRIDGE PTE. LTD., decided July 12, 2019, Public Access

U.S. Patent No. 8,917,772 relates to encoding and decoding video and is essential to a standard (page 2). A working draft is the prior art and was allegedly available during a July 2011 meeting, on a website through four step navigation with the last step being selection of one document from a list of hundreds […]