COURT REAFFIRMS THAT EXTRINSIC EVIDENCE SHOULD NOT BE USED TO CONSTRUE CLAIM WHEN IT IS INCONSISTENT WITH MORE RELIABLE INTRINSIC EVIDENCE
William Westerman | March 11, 2014
Tempo Lighting Inc. v. Tivoli, LLC.
Decided February 10, 2014
Before RADER, Chief Judge, MOORE, and WALLACH, Circuit Judges. Opinion by RADER.
Tivoli owns USP 6,554,446. The ’446 patent relates to a reflective strip of material that illuminates the edge of stair steps in low light situations. Claim 1, for example, recites:
1. A lighting apparatus comprising:
a first extruded portion shaped to mount on the nose of a stair step; and
a second extruded portion coextruded with said first portion and mounted on top of the first portion so as to be above the nose of the stair step, said second portion comprising a material inert to light and selected to have a reflectance factor greater than or equal to light gray polyvinyl chloride.
Tivoli sued Tempo for infringement of the ’446 patent in February of 2004. Tempo responded by filing an inter partes reexamination against the ’446 patent. The USPTO issued the first Office Action in March of 2005. Soon after that, the district court stayed the infringement suit pending the result of the reexamination. The district court case remained stayed for over 8 years while the reexamination continued grinding its way through the USPTO.
Tempo filed sixty different proposed rejections in the reexamination. The examiner adopted only five of the rejections. The examiner provided a dictionary definition of the term, “inert to light.” In May of 2009 the examiner closed prosecution, retaining his rejection of the claims, and Tivoli appealed the examiner’s rejection of the claims to the Board.
The Board held that:
1. The examiner’s definition of “inert to light” was wrong and used the one based on the prosecution history, in which the term “inert to light” was “non-photoluminescent and not activated to glow by absorbing ambient light.”
2. The rejection of claims 1-3 and 6-13 were improper. The Board stated that the references did not show the feature of “inert to light.”
3. Tempo had waived alternative arguments because it did not file a cross-appeal raising such arguments.
Tempo appealed to the CAFC.
In 6-4 en banc decision, Federal Circuit maintains no-deference review of District Courts’ claim constructions
Nicolas Seckel | March 11, 2014
Lighting Ballast v. Philips Electronics (en banc, Precedential)
Decided February 21, 2014
Before NEWMAN, LOURIE, O’MALLEY. Opinion by NEWMAN, Concurrence by LOURIE, Dissent by O’MALLEY.
In a patent dispute involving the interpretation of a “means-plus-function” term, a three-judge panel of the Federal Circuit revised the District Court’s claim construction on appeal and held the patent claim invalid for indefiniteness, in the absence of any structure in the description corresponding to the “means” recited in the claim.
The Federal Circuit granted rehearing of the panel decision by the full Court (“en banc”), for the purpose of revisiting its practice of reviewing claim construction without giving any deference to the District Court. In a 6-4 decision, the Federal Circuit en banc maintains the plenary review (“de novo”) rule established by its 1998 decision Cybor Corp. v. FAS Technologies, Inc.
The term “receiver” connotes sufficiently definite structure to avoid interpretation under §112, sixth paragraph
Bill Schertler | February 7, 2014
EnOcean Gmbh v. Face International Corporation
Decided January 31, 2014
Before Radar, Lourie and Prost. Opinion by Prost
Face’s patent (USP 7,084,529) issued in 2006, having claims directed to a self-powered switch. EnOcean owns the rights to U.S. Patent Application No. 10/304,121, also having claims directed to a self-powered switch. The EnOcean ‘121 application claims priority back to a German application filed on May 24, 2000. Face’s priority only goes back to 2001. After Face’s patent issued, EnOcean amended the claims in the ‘121 application to match those of the ‘529 patent, and requested an interference.
In the interference proceeding, EnOcean identified a set of prior art references, including published PCT Application No. PCT/GB01/00901 to Burrow, that invalidated the Face’s ‘529 patent as obvious. However, the prior art date of the Burrow reference is March 5, 2001, which is an intervening date between the US filing date of EnOcean’s application (November 25, 2002) and the filing date of the German priority application (May 24, 2000).
The Board of Patent Appeals and Interferences (“Board”) treated the amended claims in EnOcean’s application reciting a “receiver” as means-plus-function claims, and, as such, found that these claims were not supported by the German priority application because the priority document did not describe the structure corresponding to the “receiver”. The Board found that these claims were not entitled to the earlier priority date of the German application, and that these claims were invalid as obvious over the same combination of prior art that invalidated Face’s patent.
EnOcean appealed. The CAFC held that the Board erred in treating certain of EnOcean’s claims as means-plus-function claims.
In case of first impression, the CAFC determines that the principles of prosecution history estoppel apply to design patents.
Linda Shapiro | January 31, 2014
Pacific Coast Marine v. Malibu Boats, LLC
Decided January 8, 2014
Before Dyk, Mayer, and Chen. Opinion by Dyk.
Bach’s original design patent application included multiple embodiments of a marine windshield. The Examiner issued a restriction requirement, in response to which Bach elected the first embodiment, canceled the other four, and filed a divisional for the third embodiment only. After the patent issued, Bach assigned it to Pacific Coast, which sued Malibu Boats for infringement. The Malibu Boats windshield differed slightly from the patented embodiment, as well as the non-elected embodiments. The district court granted Malibu Boats’ motion for partial summary judgment of non-infringement on the grounds of prosecution history estoppel, finding that “that, during prosecution, the applicant had surrendered the designs reflected in the canceled figures and amended the claim ‘in order to obtain the patent.’” The CAFC reversed, holding that although “there was a surrender of claim scope during prosecution,” the accused design was not “within the scope of the surrender.”Next Page »