Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
Patent Case Law Review: Obviousness
An invention cannot be patented if the differences between your claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was conceived. Determining obviousness – and the validity of your patent – is more than simply establishing that the invention doesn’t already exist and that it isn’t documented elsewhere. Its conception must also not have otherwise been obvious to those in the field at the time.
If you’re thinking that sounds awfully subjective in the present and highly susceptible to hindsight bias in the future, you’d be right. Beyond being one of the four main drivers for patent application rejection at examination time, obviousness is also one of the primary vectors used by the Patent Trial and Appeal Board for invalidating patents via Inter Partes Review, so it’s essential to get this right so as to limit your patent’s potential invalidation surface area.
** Episode Overview **
Kristen Hansen, Patent Strategy Specialist at Aurora, and Dr. David Jackrel, President of Jackrel Consulting, lead today’s two-part discussion with our all-star panel, dissecting recent court decisions impacting the core patenting issue of obviousness. In breaking this all down in terms of how obviousness has been playing out in the courts, Dave, Kristen, and the panel discuss:
⦿ Inter Partes Review and how some PTAB strategy deviates from conventional patenting wisdom when it comes to obviousness.
⦿ Recent obviousness case law decisions.
⦿ Practice tips related to obviousness including analysis of how previously invalidated claims impact future claims, the dangers of being your own lexicographer, and the strategic importance of drafting backup positions in your specification.
** Mossoff Minute: PREVAIL Advances **
In this month's Mossoff Minute, Professor Adam Mossoff discusses some incredibly exciting news about the PREVAIL Act, which is designed to bring much overdue reform to the Patent Trial and Appeal Board.
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[00:00:00] Josh: G'day and welcome to the Patently Strategic Podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting. It is for inventors, founders, and IP professionals alike, established or aspiring. And for the final episode of our 2024 season, we're bringing it all together with a review of recent patent case law and how these decisions could impact your strategy going forward.
The state of patents law and its implications for the success of your business. is an ever evolving landscape that combines the perspectives of the Patent Office, the judicial interpretations of the courts, and the legislative inputs of Congress. Broader situational awareness of movements on all three fronts will help not only with getting your IP right granted now, but also in formulating a patent in a way that will maximize its odds of assertability and overall value when you later need it.
Kristen Hansen, Patent Strategy Specialist at Aurora, and Dr. David Jackrell, President of Jackrell Consulting, Lead [00:01:00] today's two part discussion with our all star panel, dissecting recent court decisions impacting the core patenting issue of obviousness. This is a topic we've discussed a great deal in the past, especially in our reform focused episodes.
But for anyone just hopping on now, when patents are examined by the patent office or later litigated in a courtroom, several sections of U. S. statute come into play in determining if the claims of the patent are eligible, useful, novel, non obvious, and enabled. Patents can be rejected or invalidated if one or more of the claims are determined to be otherwise.
These problems fall under several sections of U. S. Code Title 35. The statute for the topic of today's conversation, obviousness, can be found under section 103. It essentially states that an invention cannot be patented if the differences between your claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was conceived.
So determining obviousness is more than simply establishing that an invention doesn't exist already and it isn't documented [00:02:00] elsewhere. Its conception must also not have otherwise been obvious to those in the field at the time. If you're thinking that sounds awfully subjective in the present and highly susceptible to hindsight bias in the future, you'd be right.
Beyond being one of the four main drivers for patent application rejection at examination time, Obviousness is also one of the primary vectors used by the PTAB for invalidating patents via Interparties Review. So it's essential to get this right so as to limit your patent's potential invalidation surface area.
In breaking this all down in terms of how obviousness has been playing out in the courts, Dave, Kristen, and the panel discuss Interparties Review and how some PTAB strategy deviates from conventional patenting wisdom when it comes to obviousness, recent obviousness case law decisions, and practice tips related to obviousness.
including analysis of how previously invalidated claims impact future claims, the dangers of being your own lexicographer, and the strategic importance of drafting backup positions in your specification. Kristen and Dave are joined by our always exceptional group of IP experts, including Dr. [00:03:00] Ashley Sloat, President and Director of Patent Strategy here at Aurora, Ty Davis, Patent Strategy Associate at Aurora, Daniel Wright, Patent Strategist at Aurora, and Marie Smith, Patent Agent at Brake Hughes Bellarmine LLP.
Now, before jumping in with the panel, we'd like to take you to the next installment of the Mossoff Minute, a monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references.
In this month's minute, Adam discusses some incredibly exciting news about the PREVAIL Act, which is designed to bring much overdue reform to the Patent Trial and Appeal Board.
[00:03:38] Adam Mossoff: The big news in patent policy at the end of 2024 is not the presidential election, but in fact a very important development in patent reform legislation that is moving through Congress.
The PREVAIL Act, which would bring much needed reform to this agency called the PTAB at the USPTO. The PTAB stands for the Patent Trial and Appeal Board. It has been engaging in willy [00:04:00] nilly decision making, canceling issued patents at rates of 80 to 90 percent at one point in time. In one of its review programs, 100 percent of patents were reviewed were canceled.
This has undermined the stability of these property rights that drive our innovation economy and has been a severe hamper to our economic growth. So this bill is incredibly important. It was voted out of committee in the Senate. This is part of the legislative process. First, a bill is introduced, then it is voted out of committee before eventually it's considered by the entire Senate and House and eventually voted on and then signed into law.
So this bill has been working through the legislative process. This was the next step after having been introduced was to be voted out of committee. So in the next Congress, it can be easily Voted out of committee again by the same people who just voted on it in the first time because all of them were reelected, thankfully.
And we can move the process forward and hopefully get prevail enacted [00:05:00] into law in 2025 or 2026. Looking forward to this very important development, the reestablishment of reliable and effective patent rights as a driver of innovation economy in the 21st century.
[00:05:13] Josh: Thanks, Adam. We're also publishing clips from the Mossoff Minute, as short form videos on Instagram Reels, YouTube Shorts, and TikTok.
You can check out these shorts and follow us at Aurorapetents on all three platforms. One final administrative note. This will be our last episode for the year. As we typically do, we'll be taking additional time at the end of the year to focus internally on some big tech upgrades to better serve our clients.
But we'll be back in the new year with an excellent lineup of episodes with discussions on topics, including strategies for dealing with application rejection and exploration of cannabis related patent cases, portfolio focused investment tips for startups, and of course, all of the latest on critical patent reform efforts.
I always mention this in the outro, but in case you don't make it that far, please don't hesitate to reach out to podcasts at aurorapatents. com for any other topics you'd like to hear our [00:06:00] experts unpack. And as we head into the holidays and turn the corner from Thanksgiving, we want to give thanks to all the innovators out there who are working so hard to shape our future.
And to the tireless revolutionaries battling in the trenches of innovation policy and patent reform, fighting the good fight to ensure inventors have a path clear for strong, predictable, and reliable patent rights. Thanks for all you do. It's a blessing to know and work with you all. Now, without further ado, take it away, Kristen and Dave.
[00:06:28] Kristen: Perfect. So I'm going to start and then Dave's going to jump in. And, you know, as you know, anytime we do case law, this becomes a little bit difficult for full discussion because it's a lot of, um, slide reading and like facts. So we, both of us will try to stop talking at some point so that we can all have a discussion.
Um, but the first, you know, couple of slides are heavy and into the facts of the case. So bear with us. So I'll do a quick icebreaker. So this, [00:07:00] I pulled off a LinkedIn. It made me laugh. It's it's borderline dad joke. And it says the importance of wording in claims. Two patent attorneys are sitting outside of a cafe, each enjoying their own packed lunch.
The waitress has purchased them and says, hey, you can't eat your own lunch here. Patent attorneys exchange knowing looks, sigh, and then proceed to switch lunches. But don't pump.
[00:07:19] Ty: Yeah, that's good. Remember,
[00:07:25] Kristen: your claim is always enabled by your chosen words, not by your intention. And that will be shown in a lot of these cases today.
[00:07:33] Ashley: Yeah, that's funny.
[00:07:37] Kristen: So I know I, I had to share it. I laughed. Okay, so let's get started. And a quick overview of what Dave and I are going to do today. We'll give you a couple of cases that are public service announcement cases. They're basically like, here's some facts. Don't do this. If you can help it. And then we'll talk about some recent obviousness case law decisions and some practice tips that [00:08:00] go along with that about obviousness and care using careful language.
And then inter partes review is kind of a process that's going to be talked about a little bit in these cases. And I know this panel doesn't do a lot of post grant work, so I wanted to give you a quick primer on IPR, which used to be inter partes re examination. And that, that is still available, but they are slightly different.
So, um, Interpartes review actually has a little more proceedings and discovery and argument. It's more case like and more like, um, more trial like. And re exam really doesn't take that third party into consideration as much. We don't have as much back and forth with the third party who, who basically lodges the complaint.
So in, in IPR review, You actually have a third party who tries to challenge the validity of a patent, [00:09:00] and it is always on either section 102 or 103, so anticipation or obviousness, and it's always based on patents or printed publications. It can't be other kinds of prior art. Um, any third party can file who doesn't own the patent.
And, uh, you file this petition basically after grant or after reissue, patent is reissued, or after a post grant review ends, which is another post grant proceeding. Uh, it goes to the Patent Trial and Appeal Board, which will be shorthanded for PTAB here in our discussions. And the PTAB will decide and institute a trial, or they'll deny the petition entirely.
And they'll do that within six months, and you can get an extended six months for good cause. Now, the reason to do an IPR is the cost. The cost is between 600, 000 typically. You know, compare and contrast that to one to four million or more for an actual patent infringement lawsuit. [00:10:00] And you can see trying an IPR first is, is where most people will go these days.
Um, the biggest thing is if you want to. Put out the patent infringement lawsuit and then the IPR. You can usually get a court to stay the lawsuit pending the IPR. So you, you look serious. You look like you mean business. You could still do the IPR process. If you like what comes out of that, you do not have to continue with the lawsuit.
Any questions on that before I go on.
[00:10:34] Dave: No, thank you, Kristen. That was excellent, and it saved me from having to explain any about what IPRs are later when we get to the other cases I'm going to talk about.
[00:10:46] Kristen: You are welcome. Um, okay. Let's dig into the first case. So, without digging into the actual claim language heavy in this, because this is really one of the PSA cases that I'd like to talk to you about, [00:11:00] um, I'll give you a quick overview.
This is Softview v. Apple and Motorola, and this case is about the validity of Softview's phone manufacturer patents, basically in view of Apple or Motorola patents in the same field. So, they actually filed several ex parte and interparte re exams and a petition for interparte review. So they kind of did the whole kit and caboodle here.
Um, the board actually stayed all the re exams pending the outcome of the IPR. Um, the actual review, which is another pattern that you're seeing, even if there's a reexam pending, the board would rather see the whole IPR review process because it is more discovery and more trial like it ended up 18 challenge claims in the IPR were unpatentable, and there were 300.
Uh, one claims remaining in the soft view patent under review. And so board lifted the stage to consider actual validity of the remaining [00:12:00] claims in the re exams. So all of the problems that came up happened to be in the inter partes re exams. The examiner rejected the majority of those claims on obviousness grounds.
And on appeal, the board reversed the examiner, but then rejected all of the claims. And they did this under a rule 4273, which basically says a patent applicant or an owner is precluded from taking action inconsistent with adverse judgment and including obtaining any patent on a claim that was not patently distinct from a finally refused or canceled claim.
So this happens fairly easily and fairly often. The patent Owner accidentally created claims from, uh, either invalidated or canceled content they did not assess for obviousness or how it could be an obvious variant of, or maybe somebody else on the team did it. You could have a large IPR team [00:13:00] and somebody else was tasked with writing up new claims to go and see if they were valid.
And so your shuttered claims inadvertently step on something that's been invalidated or canceled. So it's, it's a big no, no, uh, they won't let you do it if they catch you doing it. And if somebody else catches you, they'll throw you back into IPR review. So, the outcome for that PSA is basically the, the PTO does have the authority to a stop all patentees from obtaining those claims that are not patently distinct from the previously invalidated claims.
So you should really assess. You know, newer amended claims to make sure they're patently distinct. If you are going after anything after 1 of these post grant reviews, uh, and you should also determine whether a newer amended claim is not obvious. Um, you know, they have a lot of definitions thrown in here for assessing this.
But usually if you're familiar with your claim set, you can figure out [00:14:00] that you tried to do X or Y and they assessed X or Y in the review. Maybe in this particular case, they combined a system and a method claim components and and they were both from invalidated claims. So they try to make a new claim, but both of that content was invalidated.
Fully and for reason, right? It wasn't just it wasn't just we reject. It's, you know, it's rejected because each individual claim element was rejected and then the owner tried to tie them together in a new claim, but that was kind of interesting because usually we've we have done that before where we have.
You know, in prosecution said, okay, well, if you don't like the method, let me get part of the system in there and then see, but we're looking to overcome. You know, both obviousness and anticipation and obviousness over the art that's there. So if somebody already made a recommendation on that art or an actual outcome of that [00:15:00] art, you know, you already know that.
So you're not supposed to do that combos.
[00:15:04] Ashley: And Kristen, just as a one quick aside, this. This doesn't apply to claims that were already issued. Right? So, like, if you have canceled claims, we have other issued cases in the same family. Those aren't being canceled that those are not patented, potentially not patentably distinct are not also canceled.
It's only preventing you from seeking new claims in new pending cases, right?
[00:15:34] Kristen: Um, no, this would be part of if it's in the family and it was under review or under re exam, right? It could have been you had several family members in there. Right, but not
[00:15:45] Ashley: issued cases. It's only it's only applies to pending cases.
That was my read. Right. If you already had other issued family members, they can't. You have to, you would have to go through a separate IPR for those, they can't [00:16:00] take away
[00:16:01] Kristen: those. Correct, they will not take those away based on the current IPR, but they could throw you into IPR in a new setting with that exact family member.
You're not
[00:16:12] Ashley: stopped, basically, in that issued case setting, you're not stopped, they still would have to go through a whole, Correct. IPR.
[00:16:20] Kristen: Um, well, here's the thing though, if you generate new, new con claims off of that other family member and they have been, um, invalidated in a sister proceeding and it has the same content or an obvious variant of, you could actually be called in on that and they could be just basically they'd be rejected, right?
Right. But that's
[00:16:44] Ashley: still a pending case, you know, in the world where you have other issues like already issued cases. They can't cancel those or anything. You'd have to go through a whole proceeding where this applies is if you have, if you're trying to newly present new [00:17:00] claims or make amendments to existing pending claims, you're stopped from doing so.
If they're not patentably distinct from ones that are canceled.
[00:17:11] Kristen: Correct. And it just comes in, though, if you're, if you're generating continuation claims after some of these proceedings and family members, you want to be careful to
[00:17:21] Marie: Kristen to go back to previous slide. There were over 300 claims.
[00:17:26] Ty: Yeah,
[00:17:29] Marie: I'm just saying when you when you when you this occurred, you really are like in a landmine.
Yes,
[00:17:39] Kristen: it's generating claims, uh, reviewing claims. Everything can be a landmine because there's so many just so yeah, I mean, that's kind of yeah. So my next, my next tip was use AI to proof and check your newly proposed claims against all claims in prior proceedings in the family or all invalidated claims, you know, [00:18:00] however you want to do it.
But, you know, it's probably best practice to do it against all so that, you know, you're not trying to recreate the exact same claim that's been assessed, rejected or whatnot. Um, and then consider making specific arguments for the amended claims being patently distinct from the canceled claims. Often in one of these proceedings, you'll cancel some claims, or you will have canceled claims in in the history and on IPR in one of your responses, you actually might want to say why they're different than canceled so that you can create this line.
So you cannot be stopped. Um, You know, they can disagree with you, right? They can, they can come up and say, well, we know you said this, but we don't agree. The logic doesn't fit. So, but it might be worth a try in one of these responses or in the initial IPR. That was my one and only public service announcement case.
This next case is Centripetal Networks v. Palo Alto Networks. [00:19:00] And the dynamics here are actually software directed to security technology patents. And I'll walk you through the quick timeline. This is a very standard timeline for how things are getting done these days in the courts and in combination with the PTO in post grant.
So in March of 2021, Centripetal alleged that Palo Alto infringed four Threat Intelligent Gateway Network security patents in three years. Files infringement lawsuit. July 2021, Palo Alto petitions for an IPR of the patents in question. February 2022, the PTAB initiates the inter partes review. 2023, the PTAB issues a final decision determining that all claims in the centripetal patent are unpatentable.
And in January 2024, Virginia jury in, in the actual court case finds in favor of centripetal networks and awards them 151 million in damages. So cut to October 2024, an opinion is provided by the board [00:20:00] regarding some new centripetal appeal. They've appealed the court case with respect to specific phrasing in the claim responsive to, and in view of new prior art brought forth in the new appeal.
So, a little different than the IPR, a little different, you know, reasoning. Responsive to is something we use in software to tie a couple of elements together, and it can look like in response to, responsive to, uh, doing X in response to, could be at the beginning, end of the sentence, whatever. But it basically means the examiner has to go out and find the thing that it checked.
to determine this responsive to, and it has to result in the piece after the responsive to. So you have to find both of those in combination. It's difficult for them to split that up and find that over two separate prior art, and they tend to look for it and then move out from there, because it's more difficult to find the combination.
But in this [00:21:00] case, uh, A panel, um, actually let me go through the, a little bit of the claim language because it might be important in the next slide. So this one basically says response to a determination by a packet filtering device, uh, and based on one or more indicators specified by some filtering rule, apply the packet.
I'm
sorry, apply an operator specified by the first packet filtering rule to cause this. packet to be allowed and they communicate that the packet was allowed. That's basically what these say. So the responsive to arguments, Centripetal said and argued that responsive to language requires the application and communicating steps of the claim to be performed in reaction to a packet satisfying this rule.
So this is how I explained. We typically do it in software and they went on to say this [00:22:00] language establishes a clear cause and effect relationship between the packet satisfying the packet filtering rule and the subsequent application of the operator, allowing the packet and communication of data to actually occur and that it was occurring.
So here the board responded to their responsive to arguments and said, well, we consider the meaning of the claim language in the context of determining whether the prior art teaches or suggest the limitations at issue. So, basically, they use obviousness language and said, well, we're looking to see if it's obvious, because if this prior art teaches or suggest.
It's obvious. So, Centripetal did not argue in prior appeals about any definition of responsive to. So, in their IPRs, nothing was talked about of responsive to on the Centripetal side, even though the other side came up with definitions that they thought were important. So, based on Basically, A and B in the prior art that I'll go through in a second, the board determined that the new prior art renders [00:23:00] interpretive claims obvious, and the A and B were basically prior art indicates when a rule includes conditions in both its header and option section, the art teaches that a packet must match all the conditions specified in a rule to trigger the rule.
And to perform the role. And they said that's the same as making a determination in your, your claim. And then they said the prior art teaches that the rules contain conditions in addition to the IP addresses in the rule. And the conditions are applied when the packet matches all conditions. So applying the step is responsive to a determination that the packet satisfies the rule is what they said.
So they're coming up with this being obvious. So as a, as a patent owner, I mean, the only, there's only a couple of things you can do to guard against those. Um, because a party who participated in a prior action of the PTAB may actually be stopped from challenging the board's factual findings regarding prior art in subsequent proceedings.
So, they [00:24:00] participated in a prior action. This claim was considered, um, they didn't put any definitions on, on record. They didn't say what they thought was important. Um, so, they can actually stop you from challenging the boards. You know, facts and you know, what's really interesting is you, you not only can't like take an expert.
On up on on the trial and say that they're wrong. So, an expert can actually give an opinion that the prior is not applicable, but they can't say on record that the prior operates in a way that contradicts the P taps filings. They just, you're stopped from doing so, because of your prior proceedings and not bringing it up on the record.
So, it's kind of, it's kind of interesting. Um, and 1 thing I think you can do is a patent over owner is considered draft in respects with backup positions, maybe, and how certain claimed [00:25:00] elements may function based on other changes in the system. So, in this case, if you are looking for a responsive to. Uh, situation, maybe you write a claim that has a responsive to, uh, interaction, but then maybe you write another claim with either is different responsive to interaction, or you break it apart in 3 or 4 steps that do a little bit different.
So, just other examples of how the invention can work could have been used to get these, get these claims pushed further along and to be able to use your expert to argue.
Any questions on that case? That one
[00:25:42] Marie: was kind of an interesting one. Um, I guess one question I have is rather than Well, rather than saying responsive to, if you do determining XYZ based on, [00:26:00] or in other words, what you talked about, kind of, sometimes it ends up being a lengthy claim, but if you break out each and every step in the process as an action step, so that that step has to occur, and then, um, It has to be evaluated as to what happened in that step.
And then based on that evaluation kind of thing, then the next step will occur. So you kind of break it out more rather than just putting a general responsive to language. I mean, any thoughts on that? And also, I've had cases where you have this language, but the art, they talk about rules and the I've had, you know, The claims written in this respect read on rules because what you're saying is you are following, though you may not say it in your own spec, a rule, right?
Yes.
[00:26:57] Kristen: Yeah, I have two. One of the [00:27:00] things that I try to do when I write a claim with based on is say based at least in part on, and if I don't do it in the claim, I certainly do it in the specifications so that I can rely on it because sometimes I want to base it on several things. But I don't want to definitively say it's only based on one thing by writing a claim that says it's based on one thing.
So if I write a claim that says based at least in part on X, I might be okay in prosecution as well as even after an IPR review to add in it's also based on Y and Z. And now, you know, your prior art doesn't have Y and Z, so necessarily you cannot do this action based on X, Y, and Z. But it requires you to go narrower on your claim than you originally anticipated.
So, you know, it's. It's a difficult problem with software because all software is rules, all software is algorithms, all software is a walk through a flowchart, right? I [00:28:00] mean, it's just a matter of, of overcoming abstract problems and coming up with something innovative over what's out there. You know, not always an easy thing to do when you're stuck with a flowchart, right, or a flow of events.
Next case, Parker Vision Inc. vs. Direct of the doubt. Now, the dynamics of this case is, is the PTAB having to rely on a patent incorporated by reference to arrive at a different claim construction than the district court, which sounds crazy. It sounds crazy that they would take, you know, something that you incorporated by reference and say, well, here's the definition in there.
And we think that's what you meant. It just seems like that couldn't happen, but it did. In this case, Intel filed an IPR of Parker Vision's patent related to wireless local area networks, and they used a frequency translation tech. [00:29:00] So the appeal was filed, and at issue in the appeal was whether the board properly construed the claim term storage element.
And that was given a different and broader construction than that of district court. Um, when they consider the exact same patent. So the result, the panel actually determined that the board correctly construed the term and affirmed its obviousness decision, even though the board's decision conflicted with a prior district court construction.
And by the way, when I say panel here, usually an IPR is a panel. Um, and occasionally in an appeal, you can get a panel of examiners too. So this kind of, um, language comes up a lot in case law. And I don't, I don't know if you've all seen it often, because it's kind of IPR is new in the last decade. So it's, it's just peculiar.
Um, so really, the details here, the storage element under assessment, the patent basically describes. Apparatus for [00:30:00] down converting electromagnetic signals and at focus in the appeal is this claim limitation requiring a storage element. And the claim itself recites wherein said first and second down conversion modules each comprise a switch and a storage element.
And Parker Vision actually proposed that storage element should mean an element of an energy transfer system that stores non negligible amounts of energy from an input electromagnetic signal. And the board instead agreed with Intel's proposed construction and construed the term more broadly to mean an element of a system that stores non negligible amounts of energy from an input EM signal.
They're similar, but slightly different. And, but they pulled that from the incorporated by reference patent of the same, right? They, this, this Parker vision patent had an ink by reference that was their own reference, by the way, um, the board relied.
[00:30:57] Ashley: Yeah, Rick, did they, um, [00:31:00] I didn't appreciate this when I was looking at it or reading it.
Did they, so in their actual patent, not the incorporated by reference one in their actual one, did they say it was an element of an energy transfer system, or did that language not present itself in their actual filing either? And that was more of just a construction in their actual filing. Do you remember?
So
[00:31:23] Kristen: I don't remember and I didn't look back at the exact. Uh, filing, but typically, if you're going to define that, you're either going to use your exact specification, or you're going to pull a dictionary definition. Otherwise, you don't have, like, what you would consider a source, right? So, if they cobbled something together, they couldn't have put quotes around it in any way.
And they did so, like, the quotes that you see have been pulled directly from from the opinion. So there's no way they could have just cobbled something together without citing it. [00:32:00] And so I don't recall if this was. This particular patent or something related, right? It could have been yet another related patent, um, but likely it was in their, their actual patent.
And this, this kind of reeks of two people writing their content and changing these meanings just slightly. Um, and not on purpose, just interpreting it slightly differently given the hardware, given the invention, given how these things work, right? Like you and I might pull, A completely different definition of the term of memory for computer only because we would use slightly different terms and maybe cast it a little bit differently, depending on its use.
Right.
[00:32:44] Marie: I'm guessing in this case, I did read it, but didn't see it. I didn't go into it in depth. I'm guessing that, um, how many times we do an, uh, Well, not often, but you do an incorporated by reference. [00:33:00] Um, and clearly, this wasn't like a con where it was the same spec because there was definition in one that wasn't in the other.
And I'm guessing the patent that was. being reviewed, somebody probably put storage element in there and never defined it, assuming that it would take on the meaning of what one skilled in the art would think is a storage element. And then they basically got burned by, because the ink by reference had, they defined it themselves.
So, yeah,
[00:33:32] Kristen: exactly. And that's exactly what they said is, you know, displace the plain and ordinary meaning of this. Um, You basically act as your own, like, psychographer, which disallows the full scope of the claim set the way you did it. Um, the way they did this, by the way, is they utilized phrases like, as used herein and refer to, and the board said, hey, that conveys an intent for it to be definitional.
And [00:34:00] so what I will say to you is I use these terms, as used herein and refer to, but I don't, I try very hard not to use them on really important claim terms. I may be talking about memory in software or hardware or a chip, right? I'm not talking about the ins and outs of the inventive pieces of my claim when I do this, unless I deliberately and intentionally am trying to define something new in the industry, right?
Um, I, I don't know. If you use terms like element and feature, you know, you may have to go into what those things can mean, but I would do them in examples, you know, in some embodiments, an element can be a blah, blah, blah. In some embodiments, it can be another thing instead of using as used here and referred to just because they're [00:35:00] really important pieces of your claim.
[00:35:05] Dave: Yeah,
[00:35:05] Ty: I
[00:35:06] Dave: totally agree. The anytime definitions are incorporated, it's got to be very deliberate and really careful about why and what it says. And I also remember in the last year or so, we saw some case law. It's similar. It's not exactly related to this one, but that if you have a definition in a case that's incorporated by reference, that is a bit different than than a new definition in a new case, and especially if the new definition intentionally, um, clarifies or narrows or kind of redefines it, the, the definition incorporated in the case incorporated by reference will not, it's not a problem.
The new definition supersedes or the old definition if you will, but I don't think that's relevant here necessarily, just related kind of.
[00:35:52] Ashley: But yeah, it underscores too the need that like if you're incorporating by reference And one, maybe you shouldn't, and if there's [00:36:00] anything that's critical for a filing, you should just be dragging that over into the filing.
You know, kind of like the more international view of things that don't do incorporation by reference. If something's really critical, drag it over and otherwise don't do the incorporation by reference. Because to Dave's point, you know, The new depth is supposed to supposed to control, but here it didn't.
Right. So who knows how things are going to be viewed?
[00:36:25] Dan: Yeah, I was just going to corroborate that with there is, I think, a certain lazy expediency of Oh, yeah, especially for sort of like secondary, um, elements of an invention where okay, an iterative invention where we're still working on this technology we've already filed on before, We've got these new features that we're adding.
We still maybe need to rely on these other features that we've disclosed before, so eh, whatever, just incorporate by reference. That other stuff and we'll just because the novelty we think is going to be in this new [00:37:00] portion. And this was a great example of yeah, what's in that incorporate by reference can can haunt you if you're not paying attention.
If you're not being careful. So, um, as tedious as it may be to actually go through and check what's in that incorporate by reference, especially if that reference is more expansive than just those extra features. Then you'll. And then you need yeah, it's worthwhile to go check and and incorporate it literally into the text instead of just the incorporation by reference as you need.
[00:37:33] Kristen: Yep, agreed. And one of the, my last tip here is if you see those definitions in some sort of proceeding, post grant proceeding, appeal proceeding or otherwise, either actually argue them or clarify them on record so that it can be clear in later proceedings what you meant and that you argued it and you didn't agree with it.
Okay, that's it. I'll let Dave take over.
[00:37:59] Dan: [00:38:00] Thanks, Kristen. Before we go, I actually have one quick thing here. Maybe it's because, yeah, so I felt always felt like, um. So, Kristen, twice for, for two of these cases, you've, you've discussed both, but thus far, some of your advice has been like, make sure you include, uh, in the arguments on the record, your position on, on these things, um, Now, I've never handled, handled an IPR, any of these post grant sorts of, sorts of reviewings.
Uh, but, I always felt like, to a certain degree, the tactics is, say, as little as possible, so you have the flexibility later to make whatever argument you need later, and this seems to be The opposite advice. So can you perhaps clarify what's the difference in setting and tactics?
[00:38:49] Kristen: I can, um, generally, yes, be careful of a stop all all across the board every everywhere you're at.
However, if the other [00:39:00] side. Brings up a definition that you don't agree with. Brings up an something that you need to argue against. You need to put something on record, okay? And it needs to be substantial. It can't just be, uh, I say substantial. I mean substantive. It has to be responsive, right?
[00:39:16] Ty: Mm-hmm . Um,
[00:39:18] Kristen: and so in, in the definitions, definitely an IPR, if somebody is, is.
pulling from an old claim construction from an old case related or pulling something in that you disagree with when you get a chance to respond on the record you should. Um, and in some cases you have to, right? You have to be responsive, but I would not do this in standard prosecution. I would not do this, even sometimes in an appeal, unless you really have some sophisticated board, you know, board members or examiners who are really pulling in a lot of stuff on you and citing things against you that just don't make sense.
Then you really do kind of have to dig in and take a stand. But these [00:40:00] are not things that typical prosecution Would dictate doing they're just not they're very nuanced procedures reexamination and review and post grant. Anything is very nuanced. It's very like a litigation. Um, a lot of things are going to come out.
A lot of things must be. Basically, rebutted and on on when you have things do in writing, there's like, particular things you have to respond to, and it's in the rules and guidelines. And so you're going to say you're gonna be very uncomfortable. First of all, because you have to put a lot on record. You have to do against what you've been taught your whole prosecution career.
Right? But you also have to watch out for a stopple, because you don't want to stop yourself from something. So it's, it's, it's a very thought provoking exercise to go through a re exam or a review. Um, and I would say, I'm always surprised they're cheaper than litigation, [00:41:00] except for the fact that the courts are involved in people injuries, right?
But like, because it's the same thought process, you have these huge, big minds who get paid big bucks to go through all their thoughts. Right. And put them, put them to use. And that's what it takes to get a successful IPR to come out in your favor anyway.
[00:41:21] Ty: I think it kind of
[00:41:22] Ashley: exemplifies too with that, Dan, you, you weren't here when we have, we had a discussion with a, uh, attorney who does IPRs quite frequently.
And to Kristen's point, all, a lot of things he said was like somewhat opposite of what, Patent prosecutors do you were like, wait, what you're telling me to put this language in my bed. That doesn't seem like we're supposed to do that. And so it is a very interesting fine line of, you know, preparing things for future, but not saying too much, not shooting yourself in the foot for prosecution.
But, yeah, it's strange.
[00:41:58] Ty: Yeah,
[00:41:58] Ashley: I mean,
[00:41:59] Kristen: The [00:42:00] closest I get and the most uncomfortable I get in prosecution with saying too much is rejections to 101 abstract idea that I put a lot on record and I hate it. But if I don't put something on record, I don't make a point. I'm worried that I'm going to be for office actions down the line, still not having made all my points.
So I just, I like to put it all up front for those proceedings, but only those proceedings.
[00:42:25] Dan: Yeah, just sort of the, I think fundamentally what we do, we, we deal in words in a sense, these are all proceedings, you're handing words back and forth, but how many, how many words do you give? That's the fundamental conflict.
We would ultimately, we, I think we would all love to get, get our clients, you know, patents without having to say any words. It's just, it's just what, yeah. What we all want it to mean. We don't actually have to put any words down, but no, that's that's the business is is the words
[00:42:52] Ashley: [00:43:00] Yeah,
[00:43:01] Dan: the patent is just yeah a mutual understanding of Yeah, nebulous, undefined, yeah, nebulous sentiments, ideas towards what it is.
We don't actually have to figure it out, lock it down. But yeah, everyone, everyone wins. Everyone's happy. Right?
[00:43:20] Dave: Yeah, that's a great question, Dan, that, that good. And observation that really highlights the difference, right. Between post grant and prosecution and, um, yeah. And that they can affect each other and that it's good idea to have it.
Prosecutors and litigators working together on these, on these issues. Um, so to take it, uh, take the ball from Kristen. Now talk about a couple of recent cases that also deal with this one Oh three. Obviousness. The first case will be Qualcomm versus Intel. This is from September 24 at the Federal Circuit, and the next case will be [00:44:00] Novartis versus Regeneron.
It's a bunch of big companies duking it out, and again, that was also from September. But before we get there, we have a bonus case, which is somewhat of a PSA, uh, for the marketing team, more or less. Uh, and it's the Croc against the Dog in this case. So Crocs, the shoe company, It was, uh, versus dogs effervescent is the case of what we're talking about now, which was, uh, just from last month at the federal circuit.
So Crocs took the first bite and sued dogs for patent infringement, but dogs bit back and countersued alleging harm caused by Crocs false advertising. And that's what this case is actually about is that Crocs website. described a material in their shoes, Cross Light, as patented, proprietary, and exclusive, which was false.
Um, they, uh, [00:45:00] Crocs does have several patents around their shoes, but no, that material, Cross Light, was not actually patented. And the law at the center of this is called the Lanham Act, which was enacted to protect people against unfair competition. And this could be gained by advertising that's likely to cause confusion or misrepresents the nature of a product or service.
And so when it was at the district court, the district court set sided with Crocs and they said, ah, it's not a problem that Crocs is saying this on the website. But the CAFC reversed that and sent it back to the district court. Because the CAFC agreed with dogs, and they said that these advertising statements are directed to the nature, characteristics, or quality of the shoes, and that it falsely claims that it has a patent on this particular feature, which could cause consumers to be misled.
So the [00:46:00] basic takeaway is pretty straightforward. If it's not patented, then don't say so. Um, but like more to get into the nuance of it all. If you're advertising a product or a service as patented or patent pending, make sure that the advertised aspects actually match the scope of the patent protection.
I think that's where Crocs may have gotten into trouble here. They said, Oh, we've got patents on our shoes. So this is patented and they happen to be advertising this cross light feature, which was not. Uh, so that, that's a somewhat straightforward thing to do, but, but, you know, this is a case, I guess, where the marketing team and sales and those, those teams need to be communicating with the patent, the patent team and, and, and to understand what actually is, is patented.
So that was a fun one with, uh, some animal imagery, but
[00:46:51] Dan: there was one more sort of nuance in there where the Lanham act, uh, was less is [00:47:00] less concerned with like sources of authorship in a sense versus material qualities. And this was one of the nuances. That, that dogs pursued was originally they care. So like, yeah, whatever patented versus not patented.
That's like this legal thing. It doesn't actually deal with the, um, physical properties in a sense. Uh, and on that point, it seems dogs, dogs pursued pressed back on, well, patents implies, uh, you know, this exclusivity for a material property that. If that material property then is exclusive to Crocs shoes, then the consumer can expect the exact, or to a certain extent, similar types of stuff not being in other shoes.
So although, yes, a patent is a legal document, perhaps in that range of, um, like authorship, the presentation of patenting implies to the consumer [00:48:00] a material difference between Crocs And competitors, which was, uh, yes, it kind of
[00:48:08] Dave: exclusivity. I think is the keyword that you had that you said there, like, exactly, that's a great point.
Cause the bore, uh, the. District Court, rather, I think, took the other view, which is like, oh, you know, it's just saying that they developed this material, just saying that they authored it, they, that they, that it was theirs, but the word patented, so I think, yeah, if the website had said, we developed this special cross late material, that might have been fine, um, but yes, exactly, patent, the word patented got them in trouble, because that was actually misleading, it, it, it conveyed some kind of exclusivity.
[00:48:41] Dan: Yeah, it bridged the gap between, um, it bridged the gap into material, uh, the, the, the product itself rather than where it came from, um, yeah, I thought, I thought that was a, an interesting, interesting nuance to it all [00:49:00] too.
[00:49:00] Dave: Yeah, it, it, it, it, it is, um. Again, it goes back to Kristen's icebreaker. The words we use, they matter.
Um, so the first case then we'll get into for the one from the one Oh three side is Qualcomm versus Intel. So Qualcomm owns this us patent nine six Oh eight, six, seven, five, which we'll call the six, seven, five patent and Intel filed six IPRs related to the six, seven, five patent. Kristen earlier told us how much.
Those each cost so you can do the math. This is, uh, quite a, was quite an effort by Intel in this case. Um, and to cut to the chase that, um, the, the Qualcomm, all the claims in the, in this patent were determined as obvious by the district court and the CAFC affirmed that they were obvious. So what is this?
What is this about? Claim one includes a power tracker and a power amplifier of a circuit. Okay. [00:50:00] that is configured to generate a single power tracking circuit based on a combination of components of carrier aggregated transmit signals. Okay, so there's a lot of, there's a lot of technical jargon in there.
The figure at the right, if you're following along at home, this is figure five from the 675 patent, shows a nice sort of visual of that. You can see that they've got this power tracker, the upper left, and they've got this PA, this power amplifier, and there's two sort of signal paths here. where you have carrier aggregated transmit signals that have these very standard components of the in phase I and the quadrature Q components.
This is very standard in like signal processing, telecommunications, etc. And so what happens is if we look at the claim in, uh, uh, not to get into too much detail, but you've got the power tracker. Determines the single tracking signal based on these plurality of components. [00:51:00] So the power tracker receives these components and generates a single power tracking signal.
And then this can be used with all the standard multiplexing telecom stuff. Um, OFDM frequency, which is frequency division multiplexing or FDMA type multiplexing. Um, and then you have a power supply generator that generates the power supply voltage that's based on the power tracking signal. And, um, also from the, um, carrier aggregated transmit signals to produce a single output.
So it's taking multiple signals and it's collapsing them down to send a signal, a single signal, which is done a lot in telecommunications. So of these six IPRs that Intel filed, four were based on a reference to you, which was a European patent publication. [00:52:00] And two were based on Chen, which was a journal article.
The Chen cases didn't go as far, but the U cases did cause problems for this patent. In all of them, they were arguing about what does this term mean? What do you mean when you say plurality of carrier aggregated transmit signals? That's pretty loaded term there. And so after. A bunch of back and forth and appeal this was settled to mean signals for transmission on multiple carriers at the same time to increase the bandwidth of the user and that's pretty important because of that that it brings in a user and that is has relation in the claim and in the technology to mobile devices so it's a 103 rejection meaning that.
It's not a single prior art reference that was problematic. If it was a single prior art reference, it would be a 102, sort of a novelty problem. But here you have an obviousness, sort of an issue, where you [00:53:00] can combine multiple references together, uh, if one of the references is missing an element. And in this case, that missing element had to do with these mobile devices or these users.
So what U is mainly directed towards is very similar circuitry for base stations. And Um, Qualcomm argued that base stations are not mobile devices or users, and therefore it's, it would, it's not a, you does not anticipate or cause our claims to be obvious. So the board and the federal circuit did not agree with that, and as you'll see, I think they have good reason.
So within you, You explicitly described that the technology in you can be used for mobile terminal appropriate systems. So Qualcomm took a narrow argument and said figures three and four are directed to base stations and therefore, you know, no one would have known what to do here. It's not a valid, you know, reference to use in the obviousness, but the CAFC [00:54:00] kind of brought up, well, you know, you has figure two, which discloses a mobile terminal appropriate system and a specific statement in this paragraph that says that use power amplifier may be used in base stations or wireless transceivers of mobile terminals and the like.
So to take that, I think that's all pretty straight forward. And the like, yeah, um, and that's all pretty straightforward, but I, I'll, I'll take this as an opportunity to talk a little bit about obviousness and like what sorts of precedents there are out there for those. So in this opinion, I think it's pretty interesting.
So the CFC said more particularly, a person of ordinary skill in the art would have made any necessary modifications to you. So that a mobile device could appropriately implement use power amplifier. And that just shows you sort of the, the latitude that the courts or the, or examiners [00:55:00] have in rejecting or invalidating claims.
And in this case, they, they use Keller as the precedent. And Keller is a little bit different, what maybe people are familiar with is KSR. So there's a KSR precedent for. Evaluating whether something is obvious and Keller is another precedential case that that is often brought up when when talking about obviousness.
So in this particular opinion, they say the board correctly pointed out a finding of obvious does not obviousness does not require a showing that the features in one embodiment may be bodily incorporated into the structure of another. So it's, uh, again, it's a lot of latitude, but in a way, Keller is actually more strict.
Keller has a higher bar than KSR, because Keller requires more explicit rationale within the references themselves that, that they should be combinable. So Keller relies more heavily on this [00:56:00] TSM test, which is teaching, suggestion, or motivation. This was the standard for obviousness before KSR. That. It requires a clear, explicit motivation or rationale from within the references themselves to be able to combine.
So in many of these Keller type cases, there's a specific reason to combine the references stated in the references themselves. This is More, um, um, kind to patent holders. This is this is good for patent holders because it acknowledges this hindsight bias and it requires a clear justification for combining references that's grounded in the available knowledge at the time.
So I think we've all been on these cases where you get some claim that's rejected over maybe 345 prior art references and you say to yourself, well, This is hindsight. You looked at our claim and you just found a bunch of things that you can put together and you say it's obvious, but without reading our claim, would they [00:57:00] really, would anyone really have thought to put these four or five things together, let's say, right?
So that's Keller requires. The references themselves to say, yes, these can be combined. Like in you, you said these could be modified. Let's say these could be used in mobile device contexts. And that was a teaching right from within the reference. KSR in contrast rejects that TSM is the only way to determine obviousness.
KSR allows for combinations of prior art that are predictable or involve applying known techniques in obvious ways, even without this explicit TSM evidence. So things like improving function or saving cost are implicit motivations that may not be mentioned in the reference, but it's enough. to justify combining references under a KSR kind of rationale.
Um, in this way, KSR also places more emphasis on [00:58:00] predictability. So if combining known elements leads to a predictable result, then it strongly supports a finding of obviousness under, under KSR, even if there's no TSM from within the references themselves. Um, so yeah, so relatively straightforward, but I thought it was interesting to kind of bring up KSR versus, uh, Keller, because this is, uh, it was, uh, it was a high bar in this case that they sort of had to prove, but in this case they said, yeah, the reference actually does even say, even say this within it.
Uh, maybe I'll pause in case anyone has any comments or questions about any of that.
[00:58:36] Kristen: No, it's a good point. I think, you know, contrasting Keller versus KSR is, is also helpful, um, in pointing out how certain jurisdictions can look at things and pick one of the two. And really, Really phoned it in on the other one, right?
If they're going to pick KSR, they're ignoring Keller. They're going to pick Keller. KSR isn't strong enough anyway, [00:59:00] so you kind of get an idea of either the who and what they're doing, or like, if it's your examiner doing things like this, you get an idea of how they're going to respond to maybe your next.
Office action or your next Right. Anything.
[00:59:15] Dave: Right.
[00:59:16] Kristen: So I appreciate that. Thank you. I
[00:59:17] Dave: know what you mean. And if you do get a Kel, it may provide different ways to argue against it that there's no explicit TSM in the references. Um, so that the last case we'll talk about is this Novartis Regeneron case. Um, Novartis has the assign is the assignee for this 9 million 2 2 0 6 3 1 patent.
which relates to small volume syringes, such as a syringe suitable for ophthalmic injections. And I thought this was really interesting. I had a little, my own little rat hole learning about what these things could be for. Um, and even in the claim, actually, they describe, they claim that what this ophthalmic solution [01:00:00] has is a VEGF antagonist, which is a vascular endothelial growth antagonist.
So what they do is they'll inject these solutions directly into someone's eye, um, with this VEGF, um, antagonist. Because VEGF is a protein that promotes abnormal blood vessel growth and leakage. So they do this, they can treat diseases like age related macular degeneration, or diabetic retinopathy, or retinal vein occlusion.
So it's this. Come cool science behind this one. And, um, however, the claim is rejected, is, uh, is directed to a syringe, um, for, you know, uh, uh, applying for injecting these solutions. So all claims were found obvious over combination, several combinations of references. And two of the references that were in some of these combinations were SIG and Boulange.
There were a [01:01:00] lot of arguments in this case. And, um, so I'll, we'll, we'll kind of hit a few of them, but I think it's, it's very interesting to set the stage. Novartis, the patent holder did not meaningfully dispute that all limitations are disclosed in the prior art. So, Sig discloses a prefilled, terminally sterilized syringe, Boulange teaches a stopper with silicone oil and break loose forces, um, but Novartis argued that a skilled artisan would not have been motivated to combine the prior art with reasonable expectation of success.
Um, Then I will cut to the chase and again say that this was affirmed as, uh, obvious, so all these claims did stand as rejected. And, um, to really briefly look at the claim, because it's not very long. It's a prefilled, terminally sterilized syringe for this intravitreal injection. The syringe has a glass body, has a barrel, a stopper, and a plunger [01:02:00] for containing this subthalamus.
solution with this VEGF antagonist. And then there's a few bullet points underneath of where ins. And they're all detailed, numeric specifications of different aspects of this syringe. So this syringe has a fill volume between 0. 5 and about 1 ml. Uh, the barrel has about 0. of silicone oil to, uh, serve. to, um, lubricate it so that it can, there's not a lot of force there.
The BEGF antagonist has no more than two particles greater than 50 microns in diameter, which is very important for these ophthalmic injections. You can't have particles in people's eyes. Um, and then importantly, this stopper has a break loose force of less than about 11 newtons. It's an interesting claim, because it's fairly broad, but then they get very specific on certain numerical parameters of how the thing works.
So in the RPR, Novartis [01:03:00] had a lot of arguments that a positive person of ordinary skill in the art would not be motivated to combine these prior art references with a reasonable expectation of success. And the reason that several of these arguments focused on teaching away. That's what we're going to kind of talk about now, is what do you need really to support a teaching away argument, and these are all going to be counterexamples, because nothing that Novartis had were really, really met that, met that bar.
So, one of the things they mention is that the break loose force in one of these prior art references increased over time. Um, and the Board came back and said, well, there's no recitation of a constant force in the claim. You didn't claim that it can't increase over time. And furthermore, all of the data of this break loose force was less than 11 newtons, started at three and ended at eight.
So it was all within the range that you [01:04:00] claimed. So nope, that didn't specifically teach away. Um, they also said, well, the prior art has this example stopper that's markedly inferior to another. And they said, well, that also doesn't teach away. reach the threshold of teaching away, just because something isn't as good as something else, doesn't require, that doesn't mean they taught away.
Teaching away would have, you'd have to actually say, we're not doing this. Not that you could do it, although it's not as good, that's not teaching away. And also, uh, they brought up that one of the example stoppers had a high friction force, which would just be unacceptable for medical devices, and the board countered that, well, that's not really very relevant, because that particular example was from a stopper that wasn't even siliconized, so it's not apples to apples.
And so, you know, all of these were sort of grasping at straws, trying to say, look, the priority is different. From us in these various ways, that is not enough to say to prove teaching away really has [01:05:00] to teach away. It has to say, No, you can't do this. No, we won't do wouldn't do this. We're not doing this something much more clear to to to reach that threshold.
And there were a lot of other, I think they had 15 arguments, and they, the, the, the, the opinion focused on six or seven of them, and these are a few of those, but there were, these were the stronger ones, as far as I could tell. Yeah. Sorry, Chris.
[01:05:30] Kristen: No, that's okay. I'm shocked you didn't, you didn't see something like, oh, those are all just design choices, even though they're extremely specific.
Right,
[01:05:40] Dave: what I was wondering, although I didn't look at it, what I've seen other people try to do is take a requirement, a regulation, or a required specification for some reason and try to claim it. And therefore, like, you know, yes, it's a specific numerical value, which is limiting, [01:06:00] but it's regulated, so anyone who wants to do anything has to have that number, you know, and so I'm not sure if that's what they were trying to do here or not, or if they, that's why they, but it, it also could make sense because, well, yeah, all the stuff's out there in the prior art, if it's, uh, something that everyone has to do, you know.
[01:06:19] Dan: Yeah, I mean, I think those sorts of things are just tactics to sort of sort of make a claim feel better to an examiner and hoping the examiner doesn't actually know that that's a regulation, because to a certain extent, like, all right, if, if I include, if one includes elements that, um, seem narrowing, but don't actually cost you any breadth, well, then, as long as the examiner doesn't realize that, then, hey, like, you've maybe scored points.
So, uh, disingenuous, but I can see the tactic.
[01:06:52] Kristen: I do wonder, I wonder if they would find this. obvious if you sat it in like a method of treatment claim where you had one [01:07:00] more step on the end, you know, that it's basically like provide the injection, if that would be less obvious because it's for a specific treatment.
[01:07:08] Ashley: But I think this, these eye injections are actually pretty common, not just with VEGF, but I think a lot of other One thing like to Dave's point, I would imagine that they're, you know, they're kind of all, uh, subjected to the same constraints, you know, to some degree on like, what's what's regulated and what's allowed.
And, you know, these sterilization procedures are all kind of, I mean, kind of only a few ways to sterilize things. So I don't know if that would have actually added anything in this case because I said, I injections are pretty. Pretty common for a variety of maladies.
[01:07:46] Kristen: Okay.
[01:07:46] Ashley: And,
[01:07:48] Dave: and it's a good question. I don't, I didn't, um, look, read the whole, all the prior art in detail, but I, I got the sense that prior art was describing pretty similar kinds of, [01:08:00] you know, methods as well.
Uh, definitely systems because that's their claiming, but yeah, I thought, but it's, it's a good point. You know, that is a way if they had something that they could do that they found that was really more effective. Then what other people were doing, put it into a method of treatment. That might be a better way to go.
Yeah, maybe like,
[01:08:20] Ashley: tie it to some effect on the eye that I can see that Kristen, like, because your brake force is a particular thing, then it has a particular effect on the eye. That's more beneficial or something. Right? Like. Better release of the drug and how you measure that. Yeah, I don't want to be the person getting getting picked on that 1.
[01:08:44] Dan: There's a lot of animal models for some of that stuff.
[01:08:48] Ashley: Trust you on that 1, Dan, I'm not signing up anytime soon.
[01:08:52] Dave: Right, this could be like a, it could be, this could have been a Halloween episode, like a horror movie, sort of a eye [01:09:00]
[01:09:00] Ty: injection
[01:09:00] Dave: patent, right, yeah.
[01:09:02] Dan: Yeah, I mean, I had a, um, I had a roommate who was doing, um, some ophthalmic, he was doing experiments for ophthalmic drugs, and yeah, he was proud of his, uh, in the lab freezer, not our freezer, the, uh, the jar of rabbit eyeballs that he had.
[01:09:19] Ashley: I still remember dissecting a cow eye. In grade school or whatever to see the lens and everything like that. Crazy.
[01:09:30] Ty (2): It's amazing how tough the lens is.
[01:09:32] Ashley: Yeah. Yeah. Wow. Well, cool. I was thinking
[01:09:37] Ty (2): on the crocs. Um, the last time I'd seen croc in, uh, in a case, they'd actually. Had won a pretty big infringement case.
I don't remember against who, um, but who counted on obviousness on the friction washer of the rear strap. Yeah.
[01:09:54] Ty: Yeah. Yep.
[01:09:55] Ty (2): And I was wondering if they were just kind of feeling a little bit, kind of arrogant or crocky [01:10:00]in this last one.
Another dad joke since we started with a dad joke.
[01:10:10] Ashley: We've been Josh has been telling so many dad jokes in our house that even Alicia has started. She had a couple for me this morning. I had to pretend like I didn't know the answer.
That's like, oh, geez.
Thank you, Dan and Kristen. That was awesome. And thank you for putting that together. It's quite a bit of material, but it was good to kind of get a. A forcing function for her to search some of these. All right. Well, happy holidays, everybody. Have a wonderful Thanksgiving or Christmas or whatever y'all do.
And enjoy it. Travel safely. If you are traveling, ban
[01:10:46] Dan: rambling man. Yep. Desert lizards
[01:10:48] Ashley: or something. I don't know. Weather's looking
[01:10:51] Dan: good right now. It will be snow. I'll be driving through Vail when it's starting to snow. No, but right [01:11:00] now it doesn't look too, too bad. Um, so I got all the way off and
[01:11:05] Dave: hit the slopes.
[01:11:06] Dan: Yeah, that's perfect. No, I can, I can snowboard badly. Um, but, uh, yeah, yeah. What is looking good for going across a third of the country?
[01:11:23] Ashley: All right. Take care, everybody. All
[01:11:28] Josh: right. That's all for today, folks. Thanks. Thanks for listening and remember to check us out at aurorapatents. com for more great podcasts, blogs, and videos covering all things patent strategy.
And if you're an agent or attorney and would like to be part of the discussion or an inventor with a topic you'd like to hear discussed, email us at podcast at aurorapatents. com. Do remember that this podcast does not constitute legal advice, and until next time, keep calm and patent [01:12:00] on.
