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 on: 09-15-17 at 05:35 pm 
Started by mersenne - Last post by mersenne
If patentee's rep agreed after a telephone interview, patentee's rep should have informed the client and the client should have approved the Ex's amendment.  Has the NOA been reported to the client?  Does the NOA itself discuss the interview?
No discussion of the interview, just that patentee's rep agreed.  And this was all many years ago.  I don't think there's anything I can do about any of that now; I'm just trying to figure out how to play this ball from where it lies.

 on: 09-15-17 at 04:56 pm 
Started by mersenne - Last post by novobarro
If patentee's rep agreed after a telephone interview, patentee's rep should have informed the client and the client should have approved the Ex's amendment.  Has the NOA been reported to the client?  Does the NOA itself discuss the interview?

 on: 09-15-17 at 04:52 pm 
Started by mersenne - Last post by mersenne
mersenne:  I’ve never encountered anything like this – “wholesale rewrite” in an Examiner’s amendment!  Really?

Yeah, I've never run across it either.  It's not my case (or it wasn't at the time); the patentee just recently showed up to ask whether the claims would cover what a competitor is doing.

Quote from: NJ Patent1
What’s curious to me is that prosecution got so far down the road before Examiner woke up and insisted on “operable to” instead of “configured to”, etc.

No, those are examples from still_learnin.  In this case, there's a Notice of Allowance with examiner's amendment, where the amendment deletes all claims and puts in new ones.  Apparently, patentee's rep agreed after a telephone interview, but I don't see an interview summary.


 on: 09-15-17 at 04:29 pm 
Started by mersenne - Last post by NJ Patent1
mersenne:  I’ve never encountered anything like this – “wholesale rewrite” in an Examiner’s amendment!  Really?  If you agree and pay the issue fee, you clearly know you “own” the Examiner’s amendments.  Why were the amendments made / new claims substituted?  To overcome prior art or for reasons only “tangentially related” to patentability?  (N.b. 112 establishes conditions for patentability).  Or simply to clarify and render with even greater particularity?  In any event, IMO the claims are client property and client needs to be informed, as best you can, of what they may be surrendering.  As if you could ever say for sure wrt DoE.
To address your question; I’m not aware of black letter law that stands for the proposition that a “wholesale rewrite” surrenders all equivalents.  PHE is fact and case-by-case specific re: why the amendments were made and  their estoppel efect.  What’s curious to me is that prosecution got so far down the road before Examiner woke up and insisted on “operable to” instead of “configured to”, etc.  My gut reaction is that substitutions like these should have minimal effect on PHE/DOE. On their face, such don't appear to me to be all that different and raise the same questions.  How configured?  Operable how?  Both constructions appear to address a result and one is facially no more or less definite than the other. 

 on: 09-15-17 at 03:14 pm 
Started by Patentstudent - Last post by NJ Patent1
smgsmc:  Nice practical hypo.  Without research, my answer is yes from related viewpoints, grounded in “confusion as to source”.
TM:  Paper Mate is a registered TM.  A cursory review of the PTO database suggests registration is not in connection with dental equipment.  But IMO, “Paper Mate” is a well-known (famous?) mark and, although I consider a dentist to be a sophisticated consumer (would they expect that the source of the dental tool in their hand was the source of the pen in their pocket?), tarnishment, dilution, or similar arguments could be made.  OP would be wise to scrub.

Products Liability:  If the mark is not scrubbed, owner of “Paper Mate” could be required to respond to a stream of law suits.  Absent foreseeable misuse, such could likely be dispensed with on S/J.  But would nonetheless incur costs and distract from the business of selling pens.  I smell a business tort, just not sure what “flavor”.
FDA:  I assume the device would be subject to premarket approval by FDA.  My hunch is that FDA would consider name on the barrel as false or misleading labeling.  If the TM “Paper Mate” remained on the barrel, would the device somehow be considered “misbranded”?  Mynhunch – just a hunch – is that FDA would require the name be scrubbed as a condition of approval. 

 on: 09-15-17 at 03:10 pm 
Started by Patentstudent - Last post by midwestengineer
Are you trying to ask whether the dentist tool formed using parts purchased from vendors may infringe patents?

If the new product formed of parts of an old product infringes a patent not owned by the parts of the old product manufacturer, the inventor may be liable.  Exhaustion will generally not bar infringement in this scenario.

Generally, patent exhaustion would prevent the manufacturer of the pen from asserting any patent rights that the manufacturer had in the parts of the pen against the inventor so long as the pen was properly purchased.  There are some exceptions to the general rule that are fact specific.
Follow-up question.  Is there any requirement to remove the original manufacturer's markings if the part is modified?  For example, a PC is built of many components purchased from many manufacturers:  e.g, a processor from Intel, memory chips from Samsung, a hard drive from Western Digital.  If you open up a PC, the original manufacturers' marks are usually intact.  I assume that's because they are assembled as purchased, without modification.  But now assume I purchase a ballpoint pen marked "Papermate" on the barrel, take apart the pen, and use the barrel as part of a dental instrument (per the OP).  Would "Papermate" need to be scrubbed off or painted over?

Are you thinking of liability under section 292 for false marking?  If so, that inquiry is extremely fact specific and includes an intent element with respect to knowingly attempting to deceive by including a mark.  I don't know of any case that has addressed this particular fact pattern where one creates a new device using patented components, modifies one of the components so that it would not infringe a patent, and then does not remove the original mark on the modified component.

In terms of papermate, we're hopping over to trademark/unfair competition law.  There could be issues under a number of infringement theories but this area is even more fact specific than liability under 292.

 on: 09-15-17 at 01:56 pm 
Started by dbmax - Last post by NJ Patent1
Under the Doctrine of Claim Differentiation, can Claim 20 in this example (or any better example you might have) lead to a finding that Claim 1 is indefinite?”.  My best answer is maybe, but don’t count on it.  It is my understanding that the “doctrine” is more of a “presumption”.  In your hypo, claim 20 limits “blue” (= 450 to 950 nm) to one specific wavelength (475 nm) that is “inherent” in the limitation “blue”.  Looks like a proper dependent claim to me.  As has been noted, a dependent claim that attempts to broaden the scope of the claim from which it depends is of improper and should have been objected to by the Examiner. 

 on: 09-15-17 at 01:39 pm 
Started by patentpanda - Last post by NJ Patent1
panda:  “so if I understand this correctly …”  "That which infringes if later in time anticipates if earlier in time."  Is that what you meant?  If a claim construction of X/Y that causes the claims to read on your process would also cause them to be anticipated by (or be obvious over) the prior art, then the claims of X/Y are invalid.  Recognizing that an invalidity defense is a steep hill, that’s the way I usually approach it, rather than altering my claim construction to “preserve the validity” of the claims of X/Y.  At some point, I have to man-up and construe the claims so that I can compare them to the accused product or process.
Were you billed for legal work that you did not request or that was unnecessary?  As has been pointed-out, you need to consult the engagement letter.  If all you contracted for was an opinion of noninfringement / FTO wrt X and Y only (I’ve handled such limited engagements), then I don’t see much need to search for let alone analyze patents having a priority date later that those of X and Y.  If you were otherwise satisfied with the work and the law firm sees a possibility of further engagements, they will probably be willing to adjust the debit note. 

 on: 09-15-17 at 12:28 pm 
Started by dbmax - Last post by dbmax
Wouldn't that mean the apparatus must be able to emit the specific wavelength and the wider band? And if we interpret that way, the dependent is narrower, right?

Interesting question indeed.  Easy answer is that you should probably avoid such claiming lest you end up rolling the dice at the .... Fed. Cir. :)


Right. Clearly, a case of my typing faster than I could think, which adds even more weight to my concern.

Presuming that a more subtle (and true) redundancy than the one I attempted to illustrate survived to issue, is there any case where an independent claim has been so constructed during litigation as to be found indefinite by differentiation with a dependent claim?

I'm guessing that a such a result would be found to violate one of the "canons" of claim construction, but as bluerogue suggests, who wants to go to CAFC to find out?

 on: 09-15-17 at 08:40 am 
Started by JamesO - Last post by lazyexaminer
You are right. No new matter in a reissue so no CIP reissues. A continuation reissue is still considered a reissue of the original patent, so section 251 remains applicable re: new matter concerning the original patent. So a CIP reissue is impossible.

The only way to possibly still file is to file it as a Bauman type case as mentioned in the other thread, i.e. a regular application with no indication that it is a reissue. Search the MPEP for Bauman. So it would be a CIP of the reissue application but not itself a reissue application. You will not get the benefit of the original patent filing date because it isn't a reissue, and so the original patent will most likely be prior art.

Bauman cases are usually filed by mistake and rarely get allowed. I've seen one filed on purpose, similar to what I mentioned--non-reissue CIP of a reissue application, but I don't think it's been examined yet.

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