Law360 Analysis: Retiring Federal Circuit Judge Kathleen O’Malley ft. Eli Mazour

In Praising O’Malley, Attys Call For District Judge To Fill Seat

By Ryan Davis

Harrity Partner Eli Mazour is featured in Law360’s recent analysis regarding retiring Federal Circuit Judge Kathleen O’Malley as an IP expert..

Law360 (July 28, 2021, 9:43 PM EDT) — Retiring Federal Circuit Judge Kathleen O’Malley is the only member of the court who has served as a district judge, a background that attorneys say provided a necessary perspective that informed her incisive decisions and that they hope to see in her eventual replacement…

“Judge O’Malley’s departure will likely be cause for concern among patent owners, said Eli Mazour of Harrity & Harrity LLP, because she was viewed as more pro-patent than other Federal Circuit judges, particularly on the issue of patent eligibility.”

Read more on what Eli and the other experts have to say at



Maximize Your Patent Portfolio Using Helferich-Style Claims

By Michael Woodward, Harrity Associate

Patent owners often obtain patents to protect products, as well as complementary products or use cases associated with those products. However, when selling or licensing the patented products, a patent owner may inadvertently extinguish potential revenue streams associated with the complementary use cases due to the doctrine of patent exhaustion.

Patent exhaustion follows the basic idea that if a company sells or licenses a patented product to a buyer, the company cannot sue the buyer (or a third party that the buyer provides the patented product to under the license) for patent infringement for using the product. Patent owners should take care when preparing and licensing patents to ensure that infringement claims for complementary products or use cases associated with patented products are not exhausted by the sale or licensing of the patented products, as shown by the Federal Circuit case of Helferich Patent Licensing v. New York Times, 778 F.3D 1293 (Fed. Cir. 2015)…

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Core Wireless: Parsing the Data on Enforcement Trends Three Years On

By Alexander Zajac, Harrity Associate

To many patent practitioners, the Federal Circuit’s decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. was a watershed moment. In particular, this decision provided that claims directed to “display interfaces” that “improved” on existing interfaces were patent eligible under 35 U.S.C. § 101. In other words, Core Wireless decreased the chances of a court finding a graphical user interface (GUI) patent to be directed to ineligible subject matter and therefore invalid.

We don’t have to look far to see the impact that the nearly-three-year-old Core Wireless decision has had. Almost 100 district court decisions have cited the case since it came down in January of 2019, and nearly 30 inter partes review (IPR) proceedings filed after January of 2019 include citations of Core Wireless by practitioners, the Board, or both…

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Product Success Can Show Nonobviousness

By Patrick Hansen, Associate

The U.S. Supreme Court’s KSR decision has left an impression that any claimed invention based on a combination of known, related features is likely obvious under 35 U.S.C. § 103.  The recent Fox Factory, Inc. v. SRAM, LLC (Fed. Cir. May 18, 2020) decision is a heartening reminder that is not always the case.  In Fox Factory, the Federal Circuit affirmed a Board holding that claims 1-26 of U.S. Patent 9,291,250 (‘250 patent) are not unpatentable as obvious under Section 103.  What makes this decision reassuring for patent owners and applicants is that the Federal Circuit upheld SRAM’s ‘250 patent based on objective indicia of nonobviousness (also known as secondary considerations).

Fox Factory and SRAM are bicycle competitors, and SRAM’s ‘250 patent is directed to a single chainring of a bicycle that does not switch a chain between multiple chainrings.  The single chainring has teeth that fit more snugly into chain link spaces, and the single chainring (marketed as “X-Sync”) has been praised for retaining the chain in poor cycling conditions.

As shown in Fig. 1 from the ‘250 patent, link spaces alternate in size (D1 or D2) due to the manner in which pieces of a chain are linked.Claim 1 of the ‘250 patent recites a chainring with wider teeth of a first size that alternates with teeth of a second size, in order to snugly fit into respective outer (D2) and inner (D1) link spaces.  In particular, claim 1 recites that a wider tooth is designed to fill, at the midpoint, at least 80% of an outer link space.

SRAM asserted the ‘250 patent against Fox Factory in the U.S. District Court for the Northern District of Illinois.  In a corresponding inter partes review (IPR) proceeding, Fox Factory cited Japanese patent publication JP S56-42489 (“Shimano”) and U.S. Patent 3,375,022 (“Hattan”).  Shimano describes a chainring with widened teeth for wider link spaces, and Hattan describes filling link spaces between 74.6% and 96% of a space width at the bottom of a tooth.  Fox Factory argued that it would have been obvious to a skilled artisan to see the utility in designing a chainring with widened teeth to improve chain retention and to look to Hattan for filling the link space at least 80%.  However, the Board found that Hattan’s fill percentages applied to the bottom of a tooth rather than the midpoint of the tooth.  Notably, the Board found that SRAM’s evidence of secondary considerations rebutted Fox Factory’s argument that a skilled artisan would nevertheless find it obvious to modify Shimano’s chainring teeth to fill at least 80% of a wide link space at the middle of a tooth.  Judge Lourie, writing for the Federal Circuit panel that included Judges Mayer and Wallach, affirmed the Board’s decision.

As you may recall, the Graham v. John Deere Co., 383 U.S. 1 (1966) analysis includes four factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the patent claims; (3) the level of ordinary skill in the art; and (4) secondary considerations (also known more favorably as objective indicia of nonobviousness).  All four factors are to be evaluated collectively before a conclusion on obviousness is reached, and the burden of proof remains with the patent challenger.  Fox Factory argued that the only difference at issue is the degree to which a wider link space is filled, measured halfway up the tooth.  Fox Factory also argued that the Board erred in presuming a nexus between the claimed invention and evidence of success, arguing that it is the tall hooked teeth that drove the X-Sync chainring to be successful.

While acknowledging that a mere change in proportion may not meet the level of invention required by Section 103, the Federal Circuit agreed with the Board that SRAM’s design of the X-Sync chainring teeth, as claimed, displayed significant invention.  The X-Sync chainring’s success surprised skilled artisans who were skeptical about it solving the long-felt need of chain retention.  In fact, the industry awarded the X-Sync chainring “Innovation of the Year.”

The Federal Circuit found that the X-Sync chainring and the ‘250 claims met the nexus requirement – that a product from which the secondary considerations arose is “co-extensive” with the claimed invention.  The Federal Circuit also stated that the unclaimed features, such as the hooks and protrusions of the teeth, are to some extent incorporated into the >80% fill requirement.  The Federal Circuit concluded that substantial evidence supports the Board’s determination that a nexus exists between the X-Sync chainring’s success and the teeth profile that is essentially the claimed invention.

While Fox Factory does not present any new rule, it is a reminder that patent owners and applicants should keep records indicating a long-felt need and any industry skepticism, as well as records of subsequent success of a product to which claims are directed.  Claim drafters should learn from inventors which features could contribute to a product’s commercial success or acclamation.  Fox Factory reassures us that objective indicia of nonobviousness can still be a meaningful consideration at the Board and the Federal Circuit, even over what may be argued to be routine optimization.


Your Licensees’ Patent Marking Program is Also Your Concern

By McCord Rayburn, Associate

As an in-house IP attorney, you may take comfort in knowing that your patent marking program is thorough, well-established, and properly executed. You have standardized procedures to determine which patents cover which products. You monitor product release dates to ensure appropriate marking. You have set up a “virtual marking” website to take advantage of this form of marking established by the America Invents Act (AIA). You regularly update the virtual marking website to remove expired patents and add newly granted patents. Your patent marking program is a well-oiled machine. But what about your licensees’ programs? Do you know anything about your licensees’ programs? Do you even care about your licensees’ programs? Well, you should, and the Federal Circuit recently provided another opinion to remind patent licensors that a licensee’s failure to mark can be costly.

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Obvious to Use Common Sense (If You Can Prove It)

By Jafar Ali, Associate

In KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme Court recalibrated the obviousness analysis to (re-)emphasize the relevance of “the background knowledge posted by a person having ordinary skill in the art” when determining whether there would have been an apparent reason to combine and/or modify prior art to arrive at the claimed invention.  Before KSR, the Federal Circuit and lower courts had regularly been applying the so-called “teaching, suggestion, motivation” (TSM) test, which generally required some “teaching, suggestion, or motivation” to combine and/or modify the prior art to support a conclusion of obviousness.  Critically, the Supreme Court held that the TSM test as-applied was a rigid and mandatory rule that improperly limited the obviousness inquiry by denying factfinders (e.g., examiners and juries) recourse to common sense.  KSR changed the obviousness landscape by rejecting the rigidity and formalism of the TSM test and setting forth “an expansive and flexible approach” in which the factual determinations underlying the obviousness analysis could consider “the inferences and creative steps that a person of ordinary skill in the art would employ.”

One question that was not fully resolved in KSR itself, however, was the extent to which a claimed invention could be rendered obvious based on general knowledge or common sense.  Instead, the Court simply stated that the fact-finding supporting an obviousness analysis “should be made explicit” to facilitate review while favorably citing earlier Federal Circuit decisions holding that “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”  In Koninklijke Philips N.V. v. Google LLC, 2019-1177 (Fed. Cir. Jan. 30, 2020), the Federal Circuit clarified that the “general knowledge” of a person having ordinary skill in the art can indeed be relied upon to render a claimed invention obvious, even to supply an admittedly missing claim limitation, provided that the record contains a reasoned analysis and evidentiary support for such general knowledge.

In Philips, the Federal Circuit upheld an inter partes decision of the Patent Trial and Appeal Board (“Board”) finding claims 1-11 in U.S. Patent No. 7,529,806 (“the ’806 patent”) to be invalid as obvious over a single prior art reference.  The representative claim at issue generally related to a method for delivering digital content for playback on a client device.  In particular, the claimed method recited steps to retrieve a next portion of a media presentation during playback of a previous portion, thus reducing delays relative to traditional downloading approaches in which playback cannot begin until the entire media presentation has finished downloading.  Google, in challenging the validity of the ’806 patent, referred to a publication explaining a conventional pipelining scheme to divide a media presentation into multiple segments and play a current segment (Sn) while a next segment (Sn+1) is downloading.  Citing the pipelining scheme and an expert declaration, Google argued, and the Board agreed, that the claimed method was invalid as obvious because the features admitted to be missing from the prior art were within the general knowledge of a person having ordinary skill in the art.

On appeal, the Federal Circuit held that “the skilled artisan’s knowledge [can be considered] when determining whether it would have been obvious to modify the prior art” regardless of the tribunal.  Indeed, citing KSR, the court stated that the obviousness analysis requires an assessment of the “background knowledge possessed by a person having ordinary skill in the art.”  However, reliance on general knowledge or common sense would be improper if based solely upon “conclusory statements and unspecific expert testimony,” and using background knowledge to supply a missing claim limitation should be reserved to cases where the missing limitation is “unusually simple and the technology particularly straightforward.”  In this case, the background knowledge was sufficient to supply the missing claim features because the Board relied upon expert evidence that was corroborated by the literature establishing that pipelining was within the general knowledge of a skilled artisan.

This case provides important context to further refine the impact that general knowledge has on patentability.  One noteworthy aspect is that, in Philips, the party asserting obviousness presented an expert declaration and supporting documentary evidence rather than simply making conclusory statements that a person having ordinary skill in the art would have known about the missing claim features.  Accordingly, if a patent applicant is faced with an obviousness rejection relying upon general knowledge during prosecution, the applicant can challenge the Examiner to produce supporting documentary evidence.  Furthermore, this case reaffirms the importance of having robust backup positions in a patent application, including dependent claims.  Features of independent claims believed to overcome the prior art might be alleged to be within the general knowledge of a skilled artisan in adversarial proceedings when parties asserting invalidity typically devote more resources to finding evidentiary support.  Strong dependent claims provide an avenue for at least some claims surviving in that situation.