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.”
Yoshiya Nakamura | January 22, 2014
Institute Pasteur v. Focarino (Fed. Cir. 2013)
Decided December 30, 2013
Before NEWMAN, CLEVENGER, and TARANTO, Circuit Judges. TARANTO, Circuit Judge.
Key Words: non-obviousness, biotechnology, enzyme, reasonable expectation of success
Institute Pasteur (Pasteur) owned patents claiming inventions related to a group of enzymes, i.e., Group I intron-encoded (GIIE) endonucleases. The enzymes are useful as laboratory tools to cut a DNA sequence at a particular site of the sequence in vitro or in situ. In reexamination of the patents, the Board of Appeals rejected the claims as being obvious over cited references. Pasteur appealed to the CAFC. The CAFC vacated the Board decision and remanded for consideration of what would constitute motivation for one skilled in the art to pursue the claimed invention because the Board misread the teachings in prior art and failed to weigh properly substantive evidence of non-obviousness.
Rejection of Claim Reciting “Adapted to” Perform Function Requires More Than a Prior Art Having Mere “Capability” of Performing Function
Ken Salen | January 15, 2014
Decided January 13, 2014
Before RADER, LOURIE and MOORE, Opinion by LOURIE
Raymond Giannelli appealed the decision of the United States Patent and Trademark Office Patent Trial and Appeal Board (“Board”) affirming the rejection of all claims of U.S. Patent Application 10/378,261 (“’261 application”) under 35 U.S.C. §103(a) as obvious over U.S. Patent 5,997,447 ( “’447 patent”).
CAFC reversed, finding that the Board erred in concluding that the claims of the ’261 application would have been obvious in view of the ’447 patent.
Giannelli filed the ’261 application, entitled “Rowing Machine,” in March 2003. The ’261 application discloses an exercise machine on which a user can perform a rowing motion against a selected resistance, the motion characterized by a pulling motion.