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 11 
 on: Today at 01:04 pm 
Started by Patentstudent - Last post by lazyexaminer
I don't think there's anything wrong with:

1. A valve comprising X.

2. A car having the valve of claim 1.

I see claims like this from time to time and let them go. Claim 2 includes all of the features of claim 1 and has further limitations so it passes 112(d). MPEP 608.01(n) II permits dependent claims to be even in different statutory classes:

Quote
The fact that the independent and dependent claims are in different statutory classes does not, in itself, render the latter improper. Thus, if claim 1 recites a specific product, a claim for the method of making the product of claim 1 in a particular manner would be a proper dependent claim since it could not be infringed without infringing claim 1. Similarly, if claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim. On the other hand, if claim 1 recites a method of making a specified product, a claim to the product set forth in claim 1 would not be a proper dependent claim since it is conceivable that the product claim can be infringed without infringing the base method claim if the product can be made by a method other than that recited in the base method claim.

So I don't see what is wrong with this situation.

 12 
 on: Today at 01:02 pm 
Started by Patentrookie - Last post by Tobmapsatonmi
1.) Company B sues Company A for patent infringement. Is a judgement of willful infringement more likely?

I'm just thinking out loud here, but doubt the mere fact that the product was supplied under an agreement including an NDA would make a willfulness finding more likely.  You don't imagine the NDA is actually going to recite something like, "Company A agrees to sell this infringing device to Customer and Customer agrees to keep the device confidential because it infringes Co.B's patent", do you?  B will have to find other evidence of A's knowledge of its infringement.


2.) In response to (1.) would company A go ahead and sue their customer and also possibly company B for the NDA violation?

I suppose they could sue the breaching customer, but I wonder what the damages would be.  If found to knowingly having infringed B's patents, I doubt any success at trying to argue such as consequential damages from the NDA breach.  And particularly if a court determines A was using NDAs to try to hide illegal activity, the customer's not likely to be found liable for breach.  Upholding NDAs used to hide illegal activity is considered bad public policy.  To the latter part of your question, I don't see how A sues B for the customer's breach of the NDA.


3.)(a) Should Company B sue Company A for unfair business practice on the grounds of using NDA(s) to keep the product design confidential, thereby keeping the patent infringement a secret?  (b) Even if Company A weren't violating any patents, wouldn't it still be considered unfair or unlawful, because the NDA prevents company B from determining if a patent violation exists.

I inserted (a) and (b) in your question above.  (a) I suppose if A is found to willfully infringe, B could turn that into an UBP case, depending on state law (Calif has oodles of crap companies can sue each other over), based on the notion that the NDA was part of a scheme to hide knowing infringement.  But seeing as willful infringement can get B 3X its damages, what is its damages claim under the unfair practice claim?

(b) If A's hands are clean, how can using standard business practices (NDAs for sale of product) be deemed an unfair business practice?  Try expanding the question a bit - "Hey, engineering companies don't let the entire public walk around in their factories and view their manufacturing processes.  That's unfair because then patentees won't know if they're infringing".


An example of similarity (that maybe has some precedent in the courts) might be if a manufacturer has a patent on a piece of manufacturing equipment.  A competitor sees the patent, decides to use the invention and expects the employee agreements to prevent the violation from ever being discovered by the patent owner.

I suppose it could happen, but it seems foolish and unworkable as I mentioned in my prior post, unless none of the employees know of the infringement (in which case the employee NDA isn't really of any help).  One thing to consider is what I mentioned just above, that we find it to be bad policy to uphold contracts that are intended to hide illegal activities.  Also, consider that patent term is 20 from filing, whereas in many states, employee NDAs encumbering the employee more than "X" years post-employment (2 years, 5 years, etc.) are considered unenforceable.  So in any state with such a doctrine, the employee's going to be able to blab with completely clear conscience at some point, likely ahead of patent expiration.

 13 
 on: Today at 12:46 pm 
Started by Patentstudent - Last post by still_learnin
How should I claim car with valve? With dependent or independent claim?

I don't think you can claim the car in a dependent. Generally, the preamble of a dependent claim should refer to the same article as its independent:
Quote
1. A valve comprising: ...
2. The valve of claim 1, further comprising ...
What you're proposing would read like:
Quote
2. A car including the valve of claim 1.
Although it refers to independent claim 1, I don't think claim 2 is a dependent claim.

smgsmc mentions this in his earlier comment when he notes that the EPO does allow this practice.

I can use this valve in different places in the car. Can I just claim car with valve without positioning?
You don't necessarily have to claim positioning. But you shoud claim some relationship -- structural and/or functional -- between the valve and the car.

 14 
 on: Today at 11:59 am 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi smgsmc,

I see "claim drafting" and "claims drafting", I don't know which is right?

These two are interchangeable; equally correct.


Here is another example:
"Claim dependence" vs. "Claims dependence"

The proper choice will depend on the context.

Is there any grammar rule that says both in a) are correct or one of them in b) is correct?

Having English as a second language, many sentences puzzle me.

Here I have another example:

... something that is ...

... somethings that are ...  <-- I found this in this website. How can that becomes plural.

Thank you.

Weng

 15 
 on: Today at 11:07 am 
Started by Weng Tianxiang - Last post by smgsmc
I see "claim drafting" and "claims drafting", I don't know which is right?

These two are interchangeable; equally correct.


Here is another example:
"Claim dependence" vs. "Claims dependence"

The proper choice will depend on the context.

 16 
 on: Today at 10:33 am 
Started by Patentstudent - Last post by Pianist
RPA - is regular patent application.

How should I claim car with valve? With dependent or independent claim?
I can use this valve in different places in the car. Can I just claim car with valve without positioning?

 17 
 on: Today at 10:21 am 
Started by Patentstudent - Last post by still_learnin
If I file two RPA, one for device and one for feature, how should I show this feature on device RPA?
Assume I have valve for car. How should I describe and show this valve in RPA for car with valve if I don't have patent for valve yet?

First question: what's an RPA?

When the novel feature is the valve, it is not common to file a separate patent application for the car with a novel valve. Instead, it's typical to file one patent application that fully describes the inventive aspects of the valve, mentions the use of the valve in a car (and describes any special interoperability with the valve), claims the valve with inventive aspects, and also claims the car plus valve with inventive aspects.

Is there some reason why you wouldn't use this approach?

 18 
 on: Today at 10:15 am 
Started by Patentrookie - Last post by Patentrookie
Thanks, good observation, the products being infringed would be expensive and the yearly volumes likely low and the product is used "behind closed doors", making it plausible to keep the infringement a secret.  What are the most likely decisions by both parties once the word finally gets out?

1.) Company B sues Company A for patent infringement. Is a judgement of willful infringement more likely?

2.) In response to (1.) would company A go ahead and sue their customer and also possibly company B for the NDA violation?

3.) Should Company B sue Company A for unfair business practice on the grounds of using NDA(s) to keep the product design confidential, thereby keeping the patent infringement a secret?  Even if Company A weren't violating any patents, wouldn't it still be considered unfair or unlawful, because the NDA prevents company B from determining if a patent violation exists.

An example of similarity (that maybe has some precedent in the courts) might be if a manufacturer has a patent on a piece of manufacturing equipment.  A competitor sees the patent, decides to use the invention and expects the employee agreements to prevent the violation from ever being discovered by the patent owner.

 19 
 on: Today at 09:16 am 
Started by BixPatents - Last post by BixPatents
Thanks all for the responses!  (And corrections)

@midwestengineer, agreed that I should argue that the Examiner has adopted an overly broad abstract idea.  His reasoning is that "data analysis" is abstract, so any steps that involve data processing are being roped in as also abstract.  Unfortunately this is where the unconventional improvements (backed by evidence in the form of an affidavit) lie, so they're being dismissed as part of the abstract idea.

One reason for my post was that the Examiner doesn't cite to anything when he dismisses the unconventional elements as "part of the abstract idea", so I wasn't sure if this reasoning was valid.  However your comments indicate that it may be, so it's better to try to argue those steps aren't part of the abstract idea at Step 2A and then to request reconsideration at Step 2B.

In any event, I think I did make some headway in the previous response at Step 2A regarding these elements as "improvements to computer technology." Enfish and McRo indicate that an evaluation of unconventional elements and improvements to technology at Step 2A is performed prior to determining whether a claim is directed to a judicial exception, so they can't yet be dismissed as part of an abstract idea.

 20 
 on: Today at 05:06 am 
Started by Patentstudent - Last post by Pianist
If I file two RPA, one for device and one for feature, how should I show this feature on device RPA?
Assume I have valve for car. How should I describe and show this valve in RPA for car with valve if I don't have patent for valve yet?

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