Archive for the ‘Uncategorized’ Category

Apr
30

New Guidance by the Patent Trial & Appeal Board on Overcoming Obviousness Rejections: Part I – Lectrosonics, Inc. v. Zaxcom, Inc.

Patent Law Alert from the Law Offices of Troy & Schwartz, LLC

April 30, 2020

New Guidance by the Patent Trial & Appeal Board on Overcoming Obviousness Rejections:  Part I  – Lectrosonics, Inc. v. Zaxcom, Inc

One way for the patent applicant to try and overcome an obvious rejection is to prove nonobviousness through secondary considerations (also known as “objective indicia of nonobviousness”). Yet, proving nonobviousness through secondary considerations to the satisfaction of the Patent Trial & Appeal Board (“Board”) has always been challenging even before Supreme Court’s KSR decision.  On April 14, 2020, the Board issued guidance in arguing secondary considerations by designating its most recent decision as precedential (Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR 2018-00129 (P.T.A.B. Jan. 24, 2020)) and two earlier decisions as informative (Ex parte Thompson, Appeal 2011-011620 (P.T.A.B. March 21, 2014) and Ex parte Whirlpool Corp., Appeal 2013-008232 (P.T.A.B. Oct. 30, 2013)).

This blog discusses the precedential decision in Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR 2018-00129 (P.T.A.B. Jan. 24, 2020). Given the importance of this topic, the two other decisions will be summarized in a forthcoming blog. The three decisions address nonobviousness issues in three different proceedings before the Board: an applicant’s exparte appeal, an AIA trial, and a reexamination proceeding.

Secondary considerations involve evidence “outside” the four corners of the application with a caveat: the applicant must demonstrate a nexus between the proffered evidence and the claimed invention.  If established, the Board will consider the strength of the objective-indicia evidence itself.

The Board’s Discussion of the Threshold for Establishing “Nexus”

Secondary considerations are generally related to the invention’s commercialized product. For objective indicia of nonobviousness to be accorded substantial weight, its proponent (the applicant or patent owner) must establish a nexus between the evidence and the merits of the claimed invention.  This means that the proponent must show that the asserted objective evidence is actually tied to a specific product and that product indeed “embodies the claimed features and is coextensive with them.”

Courts have considered the following secondary considerations in determining obviousness; (1) the invention’s commercial success, (2) long felt but unresolved needs, (3) the failure of others, (4) skepticism by experts, (5) praise by others, (6) teaching away by others, (7) recognition of a problem, (8) copying of the invention by competitors, and (9) other relevant factors.

The product for which objective evidence is presented must be claimed in its entirety within the patent or application.  CAFC precedent, which the Board must follow, requires that a nexus between the invention and evidence of secondary considerations is only presumed “when the product is the invention as fully disclosed and claimed – that the product embodies the claimed features and is coextensive with them.”  See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir.  2019). 

Nevertheless, all is not lost if an “automatic” nexus presumption is deemed inappropriate.  The patent owner is still afforded an opportunity to prove nexus by showing that the proffered evidence of secondary considerations is the “direct result of the unique characteristics of the claimed invention.”   The ultimate decision depends on the fact finder who “must weigh the secondary considerations evidence presented in the context of whether the claimed invention as a whole would have been obvious….”

Secondary Considerations as to the Original Claims

The Board considered the nexus requirements twice  – first with respect to the patent’s original claims and again with the patent owner’s proposed substitute claims as discussed below.  Relying on Fox, the Lectrosonics Board found that the patent owner had not demonstrated a nexus between the evidence presented and the merits of the invention as originally claimed because the evidence presented was directed to an unclaimed feature of the invention.  Secondary evidence is inapplicable if it does not apply to the patent’s actual claims.

Secondary Considerations as to the Substitute Claims

The patent owner filed a contingent motion to amend the patent to replace the six problematic patent claims with six substitute claims; the written description had disclosed features that had not been claimed and the patent owner now sought to claim these features.    The Board first held that the Motion to Amend complied with the statutory and regulatory requirements for amending found in a previous precedential order for assessing the merits of a Contingent Motion to Amend in Feb. 2019.

The Board then considered whether the proposed substitute claims were obvious, finding that the Petitioner’s (the party seeking claims invalidation of the patent) proposed prior-art combination (the combining of references in an obviousness rejection) “at best only weigh slightly weigh in favor of a conclusion of obviousness.”

The Board then turned to the patent owner’s secondary consideration case but now focusing on the substitute claims.  Had the inquiry only involved the original claims, the patent owner would have been out of luck.  The Board found, however, that the substitute claims shared a nexus with the patent owner’s proffered secondary consideration evidence: the affidavit of two declarants tying long-felt need directly to the newly added claim limitations and an industry award.

After finding a nexus, the Board then considered the secondary consideration evidence itself.  As to long-felt need as a secondary consideration, the Board was convinced that the two declarations demonstrated “a persistent need, recognized by those of ordinary skill in the art.”

Next, the Board considered the evidence of industry praise, citing the testimony of one of the patent owner’s declarants who stated that he “can’t emphasize enough the revolution these recording radios brought on.” The Board recognized that the award also “specifically praises features of the proposed substitute claims including the digital recording of microphone signals in the wireless transmitter.” Although some of the industry praise the patent owner supplied was “directed to features not explicitly recited by [the proposed substitute claims],” the patent owner’s evidence of industry praise ultimately weighed in favor of nonobviousness.

Lastly, the Board considered the evidence of the failure of others. Here, the Board determined that the patent owner’s testimony submitted in support of this factor was “conclusory and without adequate [evidentiary] support for the proposition that others failed.” This factor thus weighed in favor of the Petitioner’s obviousness arguments.

The Board ultimately concluded that, although the failure of others weighed in favor of the Petitioner because of lack of evidentiary support favoring the patent owner, the long-felt need and industry praise weighed heavily in favor of nonobviousness.  The Board concluded that the substitute claims were nonobvious, thereby saving the day for the patent owner.

Take Home Points

It has been historically very difficult to win on a secondary consideration argument before the Board and appellate courts. The following lessons can be drawn from the Lectrosonics decision:

  • In presenting an objective-indicia case, practitioners during patent prosecution or the patent owner in a post-patent proceeding must present solid evidentiary support (e.g., long-felt need, failure of others, industry praise, copying, etc.).
  • Conclusory statements are not evidence. Additionally, the nexus between that evidence and the claimed invention must be proven in those cases where the Board or a court determines that the patent applicant or patent owner are not entitled to a nexus presumption.  Such a nexus will be found lacking if the evidence does not relate to the patent’s claims.   Here, the patent owner’s win is because the Board agreed that the patent could be amended to include substitute claims after finding that the original claims had no nexus with the proffered objective evidence.
  • The Lectrosonics decision is also a good reminder for practitioners to claim everything the applicant is entitled to claim based on the written disclosure to help ensure that the required nexus between the claims and secondary considerations will be found in any “obviousness” contest. Here the patent owner won because the Board first granted its contingent motion to amend the claims to include substitute claims which then were found to be “covered” by objective secondary consideration evidence.  If a patent owner plans to file such a motion during a patent claim contest, it would be well advised to review the Board’s requirements for granting this type of motion as set forth in the decision available here. The outcome would have been far different absent the Board’s approval of the motion to amend.

©Troy & Schwartz, LLC

THANK YOU FOR YOUR INTEREST IN THIS BLOG.  AS USUAL THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.

Oct
25

CAR ACCIDENT SCENARIOS, WHO’S AT FAULT- CALL THE ACCIDENT LAW FIRM OF TROY & SCHWARTZ, LLC OFFICE IN MIAMI- 305-279-4740

WHO’S AT FAULT FOR YOUR CAR ACCIDENT?

THE SUDDEN AND TRAUMATIC IMPACT OF A CAR ACCIDENT CAN LEAVE YOU INJURED AND CONFUSED.

Understanding what just occurred is one thing- understanding the how and why of the accident is important.  The officer who arrives at the scene is responsible for determining fault.  The documentation of a police report can serve as important evidence when it comes to possible litigation. While Florida’s no-fault law may cover some of your expenses, it will not cover them all, especially in cases involving catastrophic injuries.  Seeking the advice of a Florida auto accident attorney is one way to determine your course of action.  No matter what type of accident you experienced, consulting with an attorney can help you understand the legal process.

SIDE IMPACT ACCIDENTS

Intersections top the list of places where most side-impact crashes occur.  When a driver fails to yield the right-of-way or races through a red light, the result if often a T-bone, or side-impact collision.  A T-bone collision is so-called because of the front of one car striking the middle of another, resulting in a serious crash.

Another type of side-impact crash is an angle crash when another car strikes you at an angle.  Studies show that rear-seated passengers are typically more vulnerable to injury than front-seated passengers.  This is due, in part, to the availability of safety features that better protect the driver and a front-seat passenger.

A speeding, drunk, or distracted driver can easily run a stop sign, causing a serious crash that results in life-changing harm for your passengers.

REAR END ACCCIDENTS

A rear end collision is often the result of another driver simply not paying attention to the traffic in front of them.  By the time a distracted driver realizes stopped traffic is ahead, it is too late.  Depending upon the speed and weight of the vehicle, a rear-end collision is catastrophic for those hit by the sudden force against their gridlocked vehicle.

CHAIN REACTION CAR ACCIDENTS

The force of an initial rear-end accident can push your car into the car in front of you, creating a chain reaction.  Three or more cars become involved due to the actions of one driver.

ROLLOVER CAR ACCIDENTS

An accident with a rollover tends to involve a truck, such as semi-truck or a tanker truck.  For a truck carrying hazardous material, the danger of fire or poisoning is real.

If a truck driver takes a turn too fast and their load shifts, everyone around them is at risk for serious harm.  Tanker trucks that leak upon impact may delay first responders from reaching you due to dangerous conditions.

DETERMINING FAULT OF A CAR ACCIDENT

Defensive driving is always a good idea, however, drivers who participate in reckless behavior surround us every day.  No matter how careful you are, someone near you chooses to operate their vehicle in one or more of the following dangerous ways:

Visual- taking your eyes off the road

Cognitive- taking your mind off driving

Manuel- taking your hands off the wheel

Texting and driving encompass all three components of distracted driving: visual, cognitive, and manual.  Distracted driving also includes such actions ad reaching for an item, eating while driving or applying makeup.

Drunk driving:  Despite numerous public safety campaigns, people continue to drink and drive.

Aggressive driving ranges from running red lights to changing lanes without signaling.  This type of dangerous driving quickly escalates to road rage when one driver forces another driver off the road or throws objects at a car.

When a driver loses their cool to the point of running a red light, there is a high probability of a side-impact collision.  No one should suffer extreme physical, financial, and emotional stress due to another driver’s anger and reckless actions.

CALL THE LAW OFFICE OF TROY AND SCHWARTZ, LLC TO DISCUSS ANY OF THE ISSUES NOW!  305-279-4740 OR TOLL FREE- 1800-559-4320

OFFICES IN MIAMI

Oct
24

CAN YOU FIGHT A RED LIGHT TRAFFIC CAMERA TICKET? CALL US NOW! 305-279-4740 LAW OFFICE OF TROY AND SCHWARTZ, LLC – OFFICES IN MIAMI

Have you ever opened a piece of mail, only to discover that you were caught on a traffic camera running a red light or speeding?  Even though it might seema that a photograph is the ultimate form of evidence, there are still ways to dispute it.

WHAT SHOULD YOU DO IF YOU RECEIVE A CAMERA TICKET?

If you open your mail and note that your car was photographed running a red light, the first thing you should do is look carefuly at the ticket.  Check the date, time, and location and determine whether or not it was you driving the car.

Take note of what section you are being accused of violating.  Make sure that if your penalites are listed in the code section, that the code section violations match the fines assessed on your ticket.

Check for any dates and further instructions.  Remember to abide by any specified dates.  If you miss your window to pay, your fines could almost double.  If you wait too long, your license could be suspended.

HOW CAN YOU DISPUTE A TRAFFIC CAMERA TICKET?

If you have determined that you were not the one driving your car at the time the ticket was taken,  then you have reasonable cause to fight it.

If your license plate is not legible, you’ll have even more cause to fight the ticket.  If the license plate is not clearly visible, then you really can’t be charged with the ticket at all.

In Florida, even though the owner of the vehicle is the first person deemed responsbile for a ticket.  The device that takes photos is not always accurate.  The enforcing agent should be able to provide evidence that the sensors and the camera were working accurately on the day in which the photo was taken.  If they can’t do this, you may be able to suggest or claim a device malfunctino.

YOU MAY NEED A LAWYER TO HELP WITH A TRAFFIC CAMERA TICKET

If you received a traffic camera ticket in error, or you believe that your reasons for running a light were valid, you have more than enough cause to fight your ticket.

Are you worried about how much it will cost or want to know how we may be able to help, call us now!  1-800-559-4320. LAW OFFICE OF TROY & SCHWARTZ, LLC.

 

CALL US TODAY!  1-800-559-4320- OR 305-279-4740.

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Sep
26

MIAMI, FLORIDA PERSONAL INJURY- TROY AND SCHWARTZ, LLC ATTORNEYS- 305-279-4740

UNDERSTANDING TOW TRUCK ACCIDENTS AND INJURIES

Most of us never think about a tow truck unless our car is broken down and we need to have it hauled to a repair shop.  Many drivers on the roadway are familiar with the “move over” rules which pertain to ambulances, fire trucks, and police vehicles, but many are unfamiliar with the fat that tow trucks are considered first responders and are extended the same courtesy.  Naturally, while we depend on a tow truck to assist us at the scene of an accident if our vehicle is damaged, what we forget about is that sometimes, tow trucks are the source of an accident.

Any type of vehicle may be involved in an accident as a result of negligent operation.  Tow trucks are no exception.  Tow truck drivers may not be paying attention to the traffic around them, could be operating under the influence of alcohol or prescription drugs, and may disobey traffic rules. The fact remains, tow truck drivers are not different than any other driver, and while they are first responders, they are still required to follow the rules of the road when not responding to an accident scene.  Anyone who is a victim of a tow truck accident can sustain serious injuries, primarily because tow trucks are typically much large than a passenger vehicle.

Tow truck maintenance is a serious concern, because these vehicles have several mechanisms which can result in another person being injured should they fail.  Mechanical failures can occur in the engine, in tow truck cables or hydraulic systems, or because of faulty brakes.  Regular inspection of the various parts of a tow truck is imperative to keep all drivers safe on Florida roadways.

Tow truck drivers must be properly trained to ensure they have properly secured disabled or junk vehicles on the tow truck. If the vehicle being towed has been attached incorrectly, the vehicle could come loose and cause an accident; which can lead to serious injury, or even death.  Another concern with tow trucks is their brake lights could be obstructed from view to other drivers when they are towing another car.

INJURIES SUSTAINED IN TOW TRUCK ACCIDENTS

The types of injury a victim of a tow truck accident may sustain depends largely on the reason for the accident.  Someone who is a victim of a tow truck accident because of brake failure can sustain serious back, head and neck injuries as well as have their car totaled.  The victim is not only facing the weight of a tow truck, but also of the vehicle being towed.  These types of injuries can cause victims to miss long periods of time from work, suffer debilitating pain, and may need repeated surgical procedures before they begin their recovery period.

STEPS TO TAKE AFTER TOW TRUCK ACCIDENTS

Seek medical attention after any type of an accident, especially after an accident involving a tow truck. The sheer size of the vehicle involved makes it unlikely you will escape the accident unscathed, even if you feel fine.

IF YOU, OR A LOVED ONE, HAS BEEN INVOLVED IN AN ACCIDENT ON FLORIDA ROADWAYS INVOLVING A TOW TRUCK, AN EXPERIENCED PERSONAL INJURY LAWYER CAN HELP ENSURE YOU KNOW YOUR RIGHTS AND WHAT TO EXPECT AFTER AN ACCIDENT.

TROY & SCHWARTZ, LLC

9415 SW 72nd Street, Suite 110

Miami, FL 33173

305-279-4740

We are standing by for your phone call!  305-279-4740.  or 1-800-559-4320

Sep
17

ACTUAL AND CONSTRUCTIVE KNOWLEGE IN FLORIDA SPLIT AND FALL CASES -LAW OFFICE OF TROY & SCHWARTZ, LLC MIAMI 305-279-4749

If you have a slip and fall injury in Florida,  It’s important for you to understand the difference between actual and constructive knowledge and how it applies in a personal injury case.

UNDERSTANDING ACTUAL VS. CONSTRUCTIVE KNOWLEDGE

To successfully gain compensation in a slip and fall accident case , you must be able to prove that the defendant had actual or constructive knowledge of the problem that caused your injury.  If you can prove that the defendant had knowledge and did nothing to correct the problem, you may be able to win your case.

Constructive knowledge is when the hazard either occurred regularly and was foreseeable and preventable, or existed for long enough that the entity should have reasonably known about it.  Constructive knowledge can be proven through  circumstantial evidence.

A skilled Florida personal injury attorney will be able to tell you whether enough actual or constructive knowledge exists to form a successful slip and fall case.

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