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Patent: Use of Common Sense in an Obviousness Analysis

patent-use-of-common-senseThe Federal Circuit decided Arendi S.A.R.L vs Apple Inc. in August of this year.  The Court ruled that the Patent Trial and Appeal Board misapplied the law on permissible use of common sense in an analysis. While reversing the PTAB’s final decision, the Federal Circuit held that the PTAB’s application of common sense to supply a limitation missing from a prior art reference was conclusory and unsupported by substantial evidence. The Federal Circuit explained the proper use of common sense in an obviousness finding and helpful guidance for practitioners.

Being sued by Arendi in district court for infringement of US Patent 7917843, the defending parties Apple, Google, and Motorola Mobility filed a petition for inter partes review of the declared claims. The district court proceedings were then stayed pending completion of the inter partes review proceeding.

The claims of the ’843 patent are generally directed to techniques for locating information in a displayed document. Petitioners maintained that a single prior art reference “Pandit” rendered the claims obvious. Pandit discloses methods for recognizing predetermined types of text in a body of text and performing operations pertinent to the recognized text.  Petitioners cited the recognition of telephone numbers as text and the operation performed as adding the recognized telephone number to an address book, in the specific embodiment of Pandit. The PTAB, agreed with Petitioners that, as a matter of common sense, the technique disclosed in Pandit can be presumed to perform a search of the address book using the identified telephone number in order to avoid duplicate telephone number entries.

The Appellees argued that the process of searching for data in a database was well known at the time of the invention. But, they were unable to provide a reason as to why it would be proper to extrapolate from this general knowledge to specifically add a telephone number search to the Pandit reference.

In sum, the Appellees’ conclusory statements and unspecific expert testimony were insufficient to invoke common sense to supply this key limitation.

The Federal Circuit’s opinion provided guidance regarding the application of common sense in an obviousness analysis for patent prosecution lawyers and patent litigators.

On the patent prosecution front, an applicant confronting an obviousness rejection based in part on common sense can use this case as leverage and press the patent examiner to explain, specifically, and with evidentiary support and the reason of  limitation absent from the prior art. For patent litigators, the decision is a helpful guide for parties on both sides of an invalidity case.

Criticality of claims in an infringement case

Preparing the claims comparison chart is a primary step in studying a patent infringement case. MaxVal’s Claims Set Comparison tool and Claim Chart Generator help in analyzing and especially illustrating the elements of the claims.  Claim charts are automatically generated in a ready-to-use format.

Patent and litigation attorneys have relied on MaxVal’s Claim Set Comparison and Claim Chart Generator tools for several years.

Key features of the Claim Chart tools:

  • Automatically creates a downloadable claim chart for a U.S. patent or published U.S. application.
  • View the Independent claims separately for a better view
  • Compares two sets of claims and highlights the difference between them
  • Helps figuring out the difference between the U.S. claims and the foreign counterpart claims
  • The claim charts (including PCT and EP patent/publications) can be generated in three different formats: Word, Excel or HTML.

The illustration below shows a comparison of claims sets and patent drawings for the patent #791843

Claims Set Comparison - Patent US7917843.PNG

Fig-1: Snapshot shows comparison of the claims at publication and granted stages for patent #791843

Patent drawings-843.PNG

Fig-2: Patent drawings of ‘843

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MaxVal’s Max-Insight: Popular Toolset for Patent Professionals Gets Better

Max-Insight is a suite of tools that is offered by MaxVal for patent professionals.  The tools are designed to help with routine tasks that can consume a lot of a patent professional’s time.

Patent Term Estimator – The Most Popular Tool

This free tool automatically estimates a patent’s expiration date, which is the first step in analyzing a patent. When a highly accurate patent expiration date is required, for example in preparation for litigation or for a licensing negotiation, MaxVal provides a comprehensive Patent Term Calculation report, including a manual review of the source data by a paralegal.  This report is available for a fee.

Max-Insight

Here is a complete list of the tools available through MaxVal’s Max-Insight:

  • PAIR AlertTM
  • Patent Term Estimator
  • Patent Family Tree
  • Claim Chart Generator
  • IDS Generator (for Information Disclosure Statements)
  • USPTO Widget (for patent data lookup by publication or application number)
  • Claims Set Comparison Tool
  • PAIR Uploader (upload EFS ready documents in bulk to PAIR)
  • Litigation Checker (quickly check to see if a patent has been involved in any litigation)
  • Patent Assignment Tracker

An entry level subscription to the Max-Insight suite is available for free at MaxVal.com.  Unlimited access is available with Enterprise paid subscriptions.

MaxVal has recently released a number of enhancements to the tool suite.  This includes,

  • SSL security protection. All transactions are now protected with a Secure Sockets Layer.
  • IDS Generator E-Mail. The IDS Generator now delivers results directly to the user via e-mail.
  • Claim Chart Generator. The Claims Chart Generator can now extract claims from EP and PCT cases, in addition to U.S. cases.
  • Litigation Checker tool. Users can now check the litigation status of Design patents and Re-issued patents, in addition to Utility patents.

Enhancements to MaxVal’s Alert Services

In addition to Max-Insight, IP professionals rely on MaxVal’s Alert Services to keep them up to date on their own or competitors’ applications and cases.

MaxVal has recently released its PTAB Alert Service. You can track the progress of PTAB cases automatically.

MaxVal’s Litigation Databank contains a comprehensive database of U.S. District Court, CAFC, ITC and Supreme Court cases.  You can set “watches” to alert you of changes to the status of cases of interest to you and your clients.

PAIR Alert  – An email-based alert assists patent professionals in tracking PAIR/EPO patent prosecution status and IFW updates for patent applications of interest (your/competitors’).  PAIR Alert is now available as part of Max-Insight.
Coming Soon: Self-service PTA Calculator

MaxVal will soon release an enhanced Patent Term Adjustment calculator.  This new tool supports attorneys and paralegals who wish to do the (PTA) recalculations themselves, but want assistance in gathering the required data.

MaxVal welcomes user feedback and suggestions on the tools.  We are continuing to develop the tools in response to user input.  If you have not tried Max-Insight, we suggest you do.  The basic tools are available at no cost with free registration.  Sign up here.


5 Everyday Tasks of Patent Attorneys/Paralegals (and Instant Solutions)

Patent attorneys and paralegals handle a sizable list of routine tasks for their clients every day. Some are minor but repetitive; some are complicated as well as time consuming. While it may not be possible to completely automate those complex tasks like drafting claims, prior-art search, proofreading or certain USPTO activities; it is feasible that certain simple tasks like patent term estimation, generating IDS forms or claim charts or even a mere litigation check can be done rapidly and efficiently by leveraging the power of online tools. These tools are the helping hands for Patent attorneys, paralegals and even for individual inventors, not only when they are looking to save time, effort and money, but also when they want to make some informed decisions.

Let’s see the 5 tasks that take the productive hours of patent attorneys or their team when it’s done manually but become easier when using some online tools.

1. Determining the term of a patent is primarily carried out to see until when a patent is in force. Usually the term of a patent is calculated by considering several factors like filing date; grant date, PTA, PTE, terminal disclaimers, maintenance fee payment details, etc. There are times when we look for a basic yet an instant way to estimate the term of a patent.

PTEInstant Solution-1: Patent Term Calculator
For those who want to get simple estimates, Patent Term Calculator is an instant tool that estimates the term of a given U.S patent number. It fetches the patent data from EPO/INPADOC to do this estimation.
It collects all the priority numbers/dates and identifies the right priority date (by eliminating the foreign and provisional priority) and adds the number of years based on the filing date and also extracts PTA days from the face of the patent when available and adds it to the term. It will also check for presence of TD on the front page and indicate in the interface.

2. Patent Family Tree is the graphical representation of a patent family based on genealogy and timeline. It is usually used to visualize the relationship of the patents and the jurisdictions covered.

PTFGInstant Solution-2: PTFG
Patent Family Tree Generator (PFTG) generates a visually interpretable family tree using any given patent, application, or publication number. The patent family tree is generated based on genealogy and timeline. This product extracts the priority information from INPADOC and groups it to generate an extended family tree where all the applications that share at least one common priority are included in the map, which includes provisional and abandoned applications.


3. IDS Submission (PTO/SB/08A and 08B)
is a critical part during the US patent prosecution process. An inventor or his representative is obligated to submit all the known prior-art material to the patentability of the invention. Attorneys and paralegals often spend hours generating IDS forms every time when they want to submit citations for their clients. Usually the time is spent on checking the accuracy of the data (i.e., the inventor/assignee names, publication dates, etc.)

IDS GeneratorInstant Solution-3: IDS Generator
Make this long process shorter. Through this tool, anyone can easily generate IDS forms in the USPTO-approved EFS-ready format. You simply enter patent or publication number(s) or copy and paste from a document (Word or Excel); the tool takes care of the rest. This tool extracts the relevant inventor/assignee and the dates from official public database and auto populates the form.

 

4. Claim Charts are usually prepared while evaluating the patent claims or during an infringement analysis.


Claim Chart Generator-newInstant Solution-4:
Claim Chart Generator
This handy tool generates claim charts broken down by claim element in a downloadable format in a click for any given U.S. patent/publication number, PCT Number, or EP patent/publication number. You can also choose the output formats as Word, Excel or HTML.

 

5. Checking whether a patent has been litigated is mostly executed by attorneys and paralegals for research, licensing, acquisition, or litigation purposes.

Litigation CheckerInstant Solution-5: Has This Patent Been Litigated?
This tool is a lighter version of the MaxVal’s Litigation Databank that gives a quick answer about the litigation history of a patent. You just input the patent number and it tells you if it’s been litigated or not along with the number of cases. One can use this tool to perform litigation checks for cases across US District courts, CAFC, ITC and the Supreme Court.


Max-Insight Dashboard – A New Enhancement from MaxVal

MaxVal introduces Max-Insight’s dashboard, helping users access all its solutions and services from one page.

 

 

This Dashboard enables users to:

  • View the usage count of all the tools based on the current plan
  • View features of the current plan and upgrade as needed
  • Access brochures for all of MaxVal’s products/services.

With this UI change, MaxVal has also introduced direct access to other solutions like Annuity Payer and Patent Assignment Tracking services.


Max-Insight Collection

Max-Insight is a suite of patent tools available from MaxVal Group. Max-Insight enables you to access them under one roof, which is efficient and saves time in managing patent related activities. These tools are designed for analyzing patent portfolios or performing administrative tasks relating to patents easily and quickly. Some popular tools of Max-Insight are Patent Term Estimator, Patent Family Tree, IDS Generator, Claim Chart Generator, etc.

Max-Insight is available in individual subscriptions: Free, Bronze, Silver and Gold with varying usage levels, as well as unlimited enterprise access plans.

 

About MaxVal
Founded in 2004 by a practicing patent attorney, MaxVal has evolved as we create innovative tools and services to solve real-world patent problems encountered by our clients.  We serve both in-house and outside counsel, as well as patent operations at both corporations and law firms.  Currently MaxVal has over 175 people including patent attorneys and agents, software developers, database experts, and paralegal and docketing professionals.