Nonce Words in Claims

The dictionary meaning of nonce word is "a word coined for one single occasion only." Use of nonce words that do not connote sufficiently definite structure in claim limitations may invoke 35 USC 112(f) (or pre-AIA 35 USC 112, sixth paragraph). Examples of nonce words that can operate as substitute for means are module, mechanism, element, and device.

PCT Receiving Office for Multinational Applicant

Can a Canadian company file an international application under the Patent Cooperation Treaty (PCT) with the US as the receiving office?

Third-Party Submissions

In the United States, there is a process by which a third party can provide information to the patent office in a patent application. The information must be in the form of patents, published patent applications, or other printed publications of potential relevance to the examination of the patent application. However, there are restrictions on when the third party submission can be made.

CBM Review Cannot be Predicated on Incidental Activity

In Secure Axcess, LLC v. PNC Bank Nat’l Ass’n (Fed. Cir., 2017), the Federal Circuit examined the meaning of a covered business method (CBM) patent as intended by Congress.

Abstract Idea of a Solution to a Problem Not Patentable

Electric Power Group, LLC, v. Alstom S.A. (Docket No. 2015-1778, Fed. Cir. 2016) involves eligibility of certain claims of U.S. Patent Nos. 7,233,843; 8,060,259; 8,401,710 for a patent under 35 USC 101. The patents describe systems and methods for performing real-time performance of an electric power grid. Claim 12 of U.S. Patent No. 8,401,710 (the ‘710 patent), which is considered to be representative of the asserted claims, reads as follows:

Abstract Idea with Routine Computer Functions not Patentable

In OIP Technologies, Inc. v., Inc. (Federal Circuit Docket No. 2012-1696, decided 11 June 2015), the patent-in-suit, US Patent No. 7,970,713 (OIP patent), relates to a method of optimizing the price of a product for sale. In a nutshell, the method involves sending out electronic messages to test how potential customers would respond to each of a set of prices. The method includes gathering the responses within a machine-readable medium, automatically determining an estimated outcome of using each price for the product using a computer, selecting a price at which to sell the product based on the estimated outcomes, and sending out electronic messages to potential consumers with offers at the selected price.

Modicum of Uncertainty

Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. ______ (2014) brings to light conflicting views on how to interpret the requirement of 35 USC 112, second paragraph, also known as the definiteness requirement. 35 USC 112, second paragraph, states that “[T]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.”

Claims not invalid due to omitted desirable features

ScriptPro, LLC and ScriptPro USA, LLC (ScriptPro) accused Innovation Associates, Inc. (Innovation Associates) of infringing on claims 1, 2, 4, and 8 of their U.S. Patent No. 6,910,601 (’601 patent). The ’601 patent relates to a collation unit that works with an automatic dispensing system that automatically fills and labels pill bottles or other prescription containers. The district court granted summary judgment to Innovation Associates on the basis that the asserted claims are invalid under 35 USC 112, first paragraph (or 35 USC 112(a) in the current statute). The district court based its holding on the conclusion that “the specification describes a machine containing ‘sensors,’ whereas the claims at issue claim a machine that need not have ‘sensors.’”

Decided: 29 days ago

Issue: Whether the Board is required to decide the patentability of every claim challenged in a petition for inter partes review of a patent.

Decision: Yes, petitioner is entitled to a final written decision addressing all of the claims it has challenged.

Decided: 29 days ago

Issue: Whether the inter partes review established under the Leahy-Smith America Invents Act, which authorizes the USPTO to reconsider and cancel an issued patent claim in limited circumstances, violates Article III or the Seventh Amendment of the Constitution.

Decision: No, the inter partes review does not violate Article III or the Seventh Amendment of the Constitution.