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James Yang

is a patent attorney and helps inventors and mid-sized businesses secure intellectual property protection for their inventions. He also publishes articles relating to the patent system at OC Patent Lawyer and is a a principal at Stetina Brunda Garred and Brucker.

Recent Articles by James Yang

A Claim of priority Cannot Be Made With an Incorporation by Reference

Upon filing a patent application, the USPTO mails a filing receipt.  The domestic and foreign claim of priority is stated and should be checked to make sure that it reflects the claim of priority that the inventor intends.  Otherwise, the patent owner may not be able to cure the defect when trying to sue an infringer after it issues as a patent.  If it can be fixed after it matures into a patent, the costs are much higher than the costs to fix while the patent application is still pending. 

Claimed and prior art ranges must have meaningful difference for nonobviousness

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed in this manner but other types of inventions can be defined in terms of a numerical range such as a length as well. In re: Brandt (Fed. Cir. March 27, 2018) explains that very small differences in the respective ranges can support an obviousness rejection unless the inventor shows a meaningful difference exists.

Top Patent Blogs for 2018

This is an update for the Top Patent Blogs post that I published back in 2011… In preparing for this Top Patent Blogs post, I reached out to the writers (patent attorneys and patent professor) from the Top Patent Blogs post and asked them a few questions about why they maintain their blogs. Not all responded but from those that did, I got a sense that their blogs are more than just another means of attracting new business. For example, a few use blogging as a reason for reading cases and briefing them to keep up with the current state of patent law. The reasons varied far and wide. To summarize or to get to the essence of their differentiation, I asked them how they felt their blog was different from the others on the list. For their answers, see the Comment by Blog Manager column below in the ranking list.

BRI and how it increases an obviousness determination

Owens Corning v. Fast Felt (Fed. Cir. 2017) illustrates an example of how the broadest reasonable interpretation (BRI) standard increases the chances that an obviousness argument could successfully invalidate a patent claim during a post grant patent review proceeding; and make it more difficult to overcome an obviousness rejection during patent prosecution. It also illustrates how broadening a claimed invention’s field of use could be detrimental to the claim’s validity and make it harder to overcome an obviousness rejection. 

Patent Drafting Tip: A comma affects meaning of items in list

The issue was whether the comma in the phrase “, otherwise available to the public” meant that the phrase also modifies the phrase “on sale.” If the phrase “, otherwise available to the public” does modify the “on sale” phrase then offers for sale of a product or service not offered to the public but made in secret would no longer be a bar to patentability… At least one District Court opinion has also followed the interpretation of the phrase “, otherwise available to the public” as also modifying the “on sale” phrase consistent with the USPTO. Helsinn v. Dr. Reddy’s and Teva (D.N.J. 2016).

Supreme Court holds belief of invalidity not a defense to inducement liability

In both theories of indirect patent infringement (i.e., inducement of patent infringement and contributory infringement), the patent owner must show that the defendant knew its activities were infringing. If the defendant can prove that it did not have such belief then it is a valid defense to indirect infringement. In Commil, the defendant went a step further and contended that it was not liable for inducement of infringement, arguing that it is axiomatic that one cannot infringe an invalid patent and it had a good faith belief that the patent at issue was invalid. The defendant mixed infringement and invalidity together. In the opinion, the Supreme Court placed a wall between the theories of infringement and invalidity and held that the mental state of the defendant as to the patent’s invalidity has no bearing on whether it thought its acts were infringing.

Federal Circuit Limits Divided Infringement in Akamai v. Limelight

The opinion provides guidance in terms of when divided infringement actually imposes liability for patent infringement. When a mastermind offloads one or more steps of a claimed method to another entity, then the actions of that other entity are vicariously attributed to the mastermind only if the relationship is one of a principal-agent or joint enterprise, or if there is a contract between the parties requiring or mandating the other entity to perform the offloaded method step. Whether other terms that limit the vicarious nature of a contract might impose liability will have to be litigated in the future.

CAFC Encourages Awards of Fee Shifting in Kilopass v. Sidense

In Kilopass Tech., Inc. v. Sidense Corp. (Fed. Cir. December 26, 2013), in a 2-1 decision, the majority suggested that the fee shifting provisions of 35 U.S.C. §285 have broader application and are not applicable only when subjective bad faith and objective baseless claims are found. The push for broader application for the existing fee shifting statutory provisions is particularly relevant since there has been an increase in media coverage about certain abusive litigation tactics of patent trolls. This case might signal a nod to the district courts to apply the fee shifting provisions when trolling behaviors are practiced by the patent owner.