America Invents Act : CAFC Alert

Presenting Extrinsic Evidence At District Court Does Not Guarantee Review For Clear Error On Appeal

Ryan Chirnomas | June 11, 2015

Shire Development et al. v. Watson Pharmaceutical et al.  

June 3, 2015

Before: Prost, Chen and Hughes.  Opinion by Hughes.

Summary:

In 2014, the CAFC reversed and remanded a district court finding of infringement, due to incorrect claim construction.  Shire appealed to the Supreme Court, which vacated and remanded in view of Teva v. Sandoz.  The CAFC again reached the same conclusion, and found that de novo review is appropriate in this case, since extrinsic factual findings did not “underlie” the district court’s claim construction.  Because the district court claim construction was based only on intrinsic evidence, de novo review was appropriate.


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Elimination of false marking actions does not violate the Due Process Clause of the U.S. Constitution

Scott Daniels | January 3, 2013

Brooks v. Dunlop Manufacturing

December 3, 2012

Panel:  Newman, Prost, Moore.  Opinion by Prost.

Procedural Summary

Lawyer Brooks sued Dunlop under 35 U.S.C. § 292 for falsely marking a guitar string winder with the number of a patent that had both expired and been found invalid.  During the pendency of the law suit, Congress passed the America Invents Act (AIA) that, inter alia, eliminated false marking actions, except under very limited circumstances.

The trial judge therefore dismissed Brooks’ case, despite Brooks’ argument that the AIA’s elimination of false marking cases violated the Due Process Clause of the U.S. Constitution.  On appeal, the CAFC agreed with the trial judge and therefore affirmed his dismissal of the case.


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Non-enabling disclosure by first inventor of low defect single crystal was sufficient to defeat under 102(g) patent claim of subsequent inventor

Le-Nhung McLeland | December 12, 2012

The Fox Group, Inc. v. Cree, Inc.

November 28, 2012

Panel:  Newman, O’Malley, and Wallach.  Opinion by Wallach.  Dissent by O’Malley.

Summary:

 (1)   Summary judgment in favor of defendant was affirmed with respect to asserted claims because (a) defendant was first to reduce to practice the claimed SiC single crystal, and (2) plaintiff did not produce sufficient evidence raising genuine issue of material fact to show that defendant suppressed or concealed the invention.

 (2)   Holding that unasserted claims were invalid was vacated.
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Saved by Therasense: Deliberate decision to withhold references not found where art was cited in foreign counterpart and domestic co-pending applications

Ryan Chirnomas | October 10, 2012

1st Media v. Electronic Arts et al.

Decided  September 13, 2012

Panel: Rader, Linn and Wallach.  Opinion by Rader.

Summary

This case demonstrates how Therasense has changed the inequitable conduct analysis.  Although the individual inventor and sole practitioner knew of references which were probably material, and did not submit the references, this is now insufficient to demonstrate inequitable conduct.  It must additionally be shown that there was a specific decision to withhold the documents from the USPTO, in order to show an intent to deceive.  This can be demonstrated, for example, by selective disclosure.  However, no such evidence was presented, and thus an intent to deceive, the first part of the inequitable conduct analysis, was not found.


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Belkin v. Kappos: PTO’s Determination of the threshold issue in Reexamination is not appealable

Darrin Auito | October 3, 2012

Belkin International, Inc. et al. v. David Kappos, Director, USPTO, et al.

Decided: October 2, 2012

Panel:  Rader, Lourie and Wallach. Opinion by Lourie.

Summary: 

This decision results from a pre-AIA appeal in an inter partes reexamination proceeding.  The issue in this appeal is whether a prior determination that an argument based on a given reference does not raise a substantial new question of patentability (“SNQ”) as to a claim when such an SNQ was raised with respect to certain other prior art is appealable.  The CAFC held that this determination is not appealable and that the proper course of action is to timely petition the Director to review the determination.


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Supreme Court Sides with Inventors in Kappos v. Hyatt

Darrin Auito | May 16, 2012

David J. Kappos v. Gilbert P. Hyatt

April 18, 2012

Affirmed 9-0 (CAFC en banc 7-2 decision).  Opinion by Justice Thomas.  Concurring opinion by Justice Sotomayor joined by Justice Breyer.

Summary:

The Hyatt decision is a victory for patent applicants.  Any patent applicant dissatisfied with a decision of the Board of Patent Appeals and Interferences (or Patent Trial and Appeal Board after enactment of the AIA) may file a civil action against the Director of the PTO in federal district court and introduce new evidence beyond what was submitted to the PTO.  The new evidence is subject to de novo review.


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CAFC Allows Willful Infringer to Continue Infringements for an “Ongoing Royalty” Due to “the Public’s Interest to Allow Competition in the Medical Device Arena”

Stephen Parker | February 16, 2012

Bard Peripheral Vascular, Inc., et al. v. W.L. Gore & Associates, Inc.

February 10, 2012

Panel: Gajarsa, Linn and NewmanOpinion by Gajarsa.  Dissent by Newman.

Summary

This decision concludes a forty-year-long story that began in 1973 between two cooperating individuals that independently filed patent applications for vascular grafts in 1974.  Those applications went to interference in 1983 and have been the subject of ongoing litigation since, concluding now in the current CAFC decision.  The Arizona district court from which the present case was appealed expressed that this was “the most complicated case the district court has [ever] presided over.”  In this case, the Gore inventor was the first to both 1) conceive of the invention and 2) file a patent application in 1974 (i.e., filing 6 months prior to the Bard inventor), but Gore lost in an interference before the Patent Office.  Now, Gore is found to be willfully infringing the patent that was awarded to Bard, and is subjected to doubled damages (i.e., totaling $371 million) and attorney’s fees (i.e., totaling $19 million).  However, despite these findings, the CAFC allows Gore to continue infringing, declining a permanent injunction and awarding reasonable royalties in the amount of between 12.5% to 20% for future infringements due to the weight of “the public interest to allow competition in the medical device arena.”


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Quick comparison between US and JP prior art qualification

Tsuyoshi Nakamura | December 8, 2011

“International Harmonization” may be a key word in 2011 in IP industry.  As with the patent reform act passed by Congress in September, JP counterpart was updated in June.  Thanks to efforts and big challenges done by two countries, basic requirements for patentability, especially prior art qualification, would be similar between these two countries from March 16, 2013 (effective date of the patent reform act in U.S.).  However, several differences still exist and we cannot ignore them:

1. 102(a)(2) prior art can be qualified as prior art for obviousness (JP: only anticipation).

2. Applicants can rely on a public disclosure date to antedate 102(a)(2) prior art (JP: No!).

3. Applicants may have one-year grace period (before first filing) after the first disclosure (JP: must file JP application within 6 months).

4. Once Applicants publicly disclosed the subject matter, later disclosure by an independent inventor may not bar the patentability (JP: may be qualified prior art).
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