Clear and Unmistakeable Evidence of a Disclaimer Found in Response to Enablement Rejection
| April 24, 2013
Biogen Idec, Inc., et al. v. GlaxoSmithKline LLC, et al.
April 16, 2013
Panel: Dyk, Plager, Reyna. Opinion by Reyna. Dissent by Plager.
Summary
During prosecution of the patent, applicants responded to the examiner’s enablement rejection, wherein they failed to challenge the examiner’s understanding of the crucial terms, and limited their invention to what the examiner believed their specification enabled. The CAFC affirmed the district court’s narrow claim interpretation of the term “anti-CD20 antibody” based on prosecution history disclaimer.
実施可能要件を満たしていないとして発せられた拒絶通知に対して、出願人は、審査官の理解に対して反論することなく、明細書により実施可能であると審査官が判断したものに発明を限定するような主張を行った。よって、「anti-CD20 antibody」という用語について、狭いクレーム解釈を容認した地裁の判断は誤りでなかったとCAFCは判示した。
Tags: claim construction > disclaimer > estoppel > prosecution disclaimer > prosecution history disclaimer > prosecution history estoppel
Divided Claim Construction Leads to Reversal of Jury Verdict Against Alleged Infringer
| April 17, 2013
Saffran v. Johnson & Johnson
April 4, 2013
Panel: Lourie, Moore, and O’Malley. Opinion by Lourie. Concurrence Opinions by Moore and O’Malley.
Summary
The Federal Circuit reversed a $482 million jury verdict against Cordis, a member of the Johnson & Johnson family. The reversal came as a result of the Federal Circuit’s significant narrowing of the district court’s construction of two key claim limitations. One claim term was narrowed because the Federal Circuit found that the patentee’s arguments made during prosecution of the asserted patent, for the purpose of distinguishing over cited prior art, amounted to prosecution disclaimer. Meanwhile, a structure identified in the specification by the patentee as the corresponding structure to a means-plus-function limitation was disregarded as such, because the specification failed to link the identified structure to the recited function with sufficient specificity.
Tags: claim construction > infringement > means-plus-function > prosecution argument > prosecution disclaimer > prosecution history estoppel
CAFC clarifies the presumption that prior art is enabled after In re Antor Media Corp (Fed. Cir. 2012)
| April 10, 2013
In re Steve Morsa
April 5, 2013
Panel: Rader, Lourie and O’Malley. Opinion by O’Malley.
Summary
The Board of Patent Appeals and Interferences (“Board”) had affirmed an Examiner’s finding that a short press release, relied on for an anticipation rejection, was enabling. In making its decision, the Board had held that arguments alone by the applicant were insufficient to rebut the presumption that a reference was enabling. The CAFC found that the Board and the examiner had failed to engage in a proper enablement analysis of the reference and vacated the anticipation finding.
Tags: affidavit > declaration > declaration and affidavit > enablement > evidence to overcome presumption of enablement > non-enabling prior art > presumption of enablement
CAFC Draws a Line in the Sand as to Adding “Boundary” Lines; PTO recants earlier design practice
| April 3, 2013
In re Owens
March 26, 2013
Panel: Prost, Moore and Wallach. Opinion by Prost.
Summary
Although a practice previously endorsed by the USPTO, the CAFC now holds that the addition of a “boundary” line to a design application constitutes the addition of new matter. Since the parent application gave no indication of one portion of the design being separable from the remainder, the CAFC held that there was no “possession” of the later modification in the original application.
Tags: design > design patents > new matter > possession > written description
