Patent system traps for the unwary. Example: Junker (2022); inventor’s pre-critical date letter to buyer with “quotation” of terms with price depending on quantity. Invalidating offer for sale. Design patent. Easy to have filed application sooner
Digging into the Nippon Shinyaku case (Feb. 8, 2022) on forum selection clause (only Delaware!) precluding inter partes review petition in PTO. Petitioner seeking en banc review. Will the Federal Circuit grant it?
Old cases: I occasionally hear comments about “old” cases not counting. Not true! especially in patent law and Federal Circuit precedent. Example: Caltech (2022) overturned $1 billion jury verdict based on flawed “two-tier” damage theory. Key authorities: 1983 and 2006 cases.
@patentlyo I (sort of) thought about case as one involving M-P-F clause. "The claims required a functional step, “tuning,” which might have invoked Section 112, last paragraph. See § 8.04[2][e], § 18.03[5][e]." Chisum on Patents 1.03[2][f][x][M]
@patentlyo Out of curiosity, I searched Chisum on Patents for word "patent." 8779. For "law", only 4169. "Claim": 5091. "Obvious": 1373.
Fourth? West has cycled up to F.4th. Lower volume numbers look odd. e.g. In re Samsung Electronics Co., Ltd., 2 F.4th 1371 (Fed. Cir. 2021)
Golf fans: Enjoy the Ryder Cup. Many patents relate to golf balls and equipment. chisum-patent-academy.com/wp-content/upl…
@USembassyMadrid Is a proper CDC vaccination card (paper) being excepted in Spain as sufficient documentation?
Roberts in Arthrex: “At this stage," i.e. on appeal from an IPR decision, "the Director can intervene before the court to defend or disavow the Board’s decision. §143.” 143 does not use "defend" or "disavow." Comments? Some cases: Director requests remand.
Opinions in Minerva refer to: inequitable conduct, inventor’s oath, continuation applications, patents as personal property, validity as a “factual and legal inquiry”, misuse, equitable estoppel, practicing the prior art, res judicata, law of case, claim construction, assignments
Going through SCOTUS Minerva (assignor estoppel), preparing inserts for Supreme Court Guide topical outline, which is my standard procedure. More entries than any case I can remember!!!! For topics, see next tweet.
In working on Ch. 5 revision, I notice considerable panel tension on what triggers a presumption of nexus between a commercially successful product and a patent claim. Compare Fox Factory (944 F.3d 1366) and WBIP (829 F.3d 1317).
Revising Chisum on Patents: a continuous rolling project: Recently completed: Rel. 179 (Ch. 2 inventorship and Ch. 7 (enablement, written description); Rel. 180 (Ch. 8 (claims). Underway: Ch. 5 (obviousness). A Ch.1 revision (eligible subject matter) every year (sad).
SCOTUS Minerva on estoppel. Says employee signing assignment. agreement makes no implicit representation of invention's patentability ("validity") and therefore no estoppel. What if employee fills out an invention disclosure form describing "invention"?