Board of Patent Appeals and Interferences Rules on Indefiniteness of the Term “Substantially Filled,” Prima Facie Obviousness in an Engine Cooling Method

By Charles Pierce In Ex Parte Evans et al. (Appeal 2011-004119; Application serial no. 11/823,993), the Board of Patent Appeals and Interferences reversed examiner rejections under 35 U.S.C. § 112 for indefiniteness, and 35 U.S.C. § 103(a) for obviousness. Claim 1 of the patent states: A method for cooling an internal combustion engine using a reduced toxicity, ethylene glycol and water based heat transfer fluid, said method comprising the steps of: (a) formulating a heat transfer fluid comprising (1) a glycol component consisting of ethylene glycol and propylene glycol, wherein the weight of the propylene glycol is between 5% less to less than 30% of the total weight of the glycol component and wherein the glycol component is less toxic than 10,000 mg/kg on an acute LD50(rat) oral toxicity basis, and (2) water, wherein the water comprises between 40% and 70% by weight of the total weight of the heat transfer fluid; and (b) substantially filling the cooling system of

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Cell Phone Network Patent Survives § 112 Attacks in Federal Circuit

By Chris Reaves HTC Corporation v. IPCom GmbH & Co., KG, No. 2011-1004, Fed. Cir. Jan. 30, 2012 In a recent infringement suit, a patent for a cell phone network mobile station narrowly survived several attempts at invalidation through indefiniteness.  The Federal Circuit applied numerous rules of claim interpretation, especially for means-plus-function claims, and reminded the defense of the importance of addressing all issues at the trial level.  The case serves as a good lesson in “what not to do” for both prosecutors and litigants. Background IPCom GmbH & Co., KG owns US Patent No. 6,879,830 (‘830) and other patents, which go to cell phone networks and their methods.  ‘830 in particular discusses an efficient cellular phone network “handover” – the process by which one cell tower takes over a call from another as the phone moves from place to place. IPCom and the HTC Corporation countersued each other for, respectively, infringement of three of IPCom’s patents, including ‘830, and

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Federal Circuit Finds District Courts Can Correct Obvious Errors Without Certificate of Correction

In CBT Flint Partners, LLC v. Return Path, Inc., 99 USPQ2d 1610 (Fed. Cir. 2011), CBT Flint Partners, LLC (“CBT”) appealed the District Court for the Northern District of Georgia’s grant of summary judgment of invalidity of claim 13 of U.S. Patent 6,587,550 (“the ‘550 patent”).  CBT owns the ‘550 patent, as well as another patent, the ‘114 patent, which both relate to methods and systems for charging a fee for sending spam email to recipients.  In the preferred embodiment of the ‘550 patent, the invention is implemented as part of an Internet Service Provider (“ISP”).  When a sender attempts to send spam emails over the ISP network, the patented system determines whether this sender is an “authorized sending party,” i.e., a party who has agreed to pay a fee to the ISP.  If the sender is an authorized sending party, the ISP will forward its spam emails to the intended recipients.  If the sender is not an authorized sending

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Federal Circuit Invalidates Software Claim for Indefiniteness

Federal Circuit Finds Means plus Function Element in Claim Indefinite Since Specification Did Not Describe Structure in Specification In Blackboard, Inc. v. Desire2Learn Inc., 91 U.S.P.Q.2D 1481 (Fed. Cir. 2009), the Court of Appeals for the Federal Circuit (CAFC) deliberated on two issues raised by the respective parties on appeal from the United States District Court for the Eastern District of Texas.  Specifically, Desire2Learn contested the district court’s holding of infringement of claims 36-38 of Blackboard’s U.S. Patent No. 6,988,138, which relates to an Internet-based educational support system and corresponding methods.  In turn, Blackboard cross-appealed the District Court’s ruling, on summary judgment, that claims 1-35 of the ‘138 patent are indefinite. Single login feature Turning to the first issue, Desire2Learn argued that claims 36-38 do not include a “single login” limitation for the recited method of providing an online education system, and thus were anticipated by two prior art references.  The ‘138 patent discloses a system that allows for online

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Federal Circuit Holds Standard for Claim Interpretation for Purpose of Interference Is Distinct For Claim Interpretation for Purposes of 35 U.S.C. §§102 & 112

In Agilent Tech., Inc. v. Affymetrix, Inc., Civ. Case No. 2008-1466 (Fed. Cir. June 4, 2009), Agilent owns Schembri patent 6,513,968 (“Schembri”) issued on February 4, 2003 and claimed priority to an application filed August 21, 1998.  Affymetrix believed it had earlier invented the claimed methods of the Schembri patent and copied the claims of the Schembri patent into its Besemer patent application 10/619,244 (“Besemer”) to provoke an interference.  The Besemer application claimed priority through a string of continuations to a patent application filed June 7, 1995, which made Affymetrix the senior party to the interference under 37 C.F.R 2.96. The disputed claims in the Besemer application and the Schembri patent deal with “microarray hybridization,” which is a technique for performing multiple genetic analyses on a small fluid sample.  Specifically, claim 20 of the Schembri patent and claim 66 of the Besemer application relate to a method for mixing a fluid sample during hybridization, by providing and moving a bubble

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BPAI Creates New Test for 35 U.S.C. §112

Board Finds Indefiniteness exists where Claims are Subject to Multiple Interpretations and Claims Reciting Purely Functional Relationships are Invalid for a Lack of Enablement In Ex parte Kenichi Miyazaki, 89 USPQ2d 1207 (BPAI 2008), the appellant, Kenichi Miyazaki (Miyazaki), sought the Board’s review under 35 U.S.C. §134 of the rejection of pending claims 1-6, 13, 15-18, 26 and 31 for the Application No. 09/386,000.  The claimed invention is directed to a large printer using a paper roll.  The Examiner rejected the claims 1-6, 13 and 16-18 under 35 U.S.C. §112, second paragraph, as being indefinite with regard to the recited features of a height of the paper feeding unit and a sheet feeding area with reference to a user’s height.    On appeal, the first issue related to whether the Appellant has shown that the Examiner erred in determining that claims 1-6, 13 and 16-18 are indefinite under 35 U.S.C. § 112, second paragraph, when reciting the height features when

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Federal Circuit Finds Lack Of Antecedent Basis Does Not Automatically Render Claim Indefinite Without Evidence Of Confusion As To Claim Scope

In Energizer Holdings, Inc. v. International Trade Commission, Energizer Holdings brought an action under 19 U.S.C. §1337 to prevent the importation of alkaline battery cells which Energizer asserted infringed claim 1 of Energizer’s U.S. Patent No. 5,464,709.  Claim 1 recites as follows: 1. An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as an active cathode component, and an anode gel comprised of zinc as the active anode component, wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A. After the proceedings, the Administrative Law Judge initially found that claim 1 was valid and infringed by the importation.  However, the International Trade Commission overruled the Administrative Law Judge and found claim 1 invalid under 35 U.S.C. §112, paragraph 2, for being indefinite to the

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