Andrew Melick | December 19, 2012
Intel Corp. v. Negotiated Data Solutions, Inc.
December 17, 2012
Panel: Prost, Wallach and Linn. Opinion by Linn.
Intel and National Semiconductor Corp. (“National”) entered into a cross-licensing agreement. The agreement gave Intel rights to National’s patents and patent applications having an effective filing date during the period in the agreement which lasted from 1976 to 2003. This case deals with four patents that were covered under the agreement. National assigned these patents to Vertical Networks, Inc. (“Vertical”) in 1998. Vertical then filed broadening reissue applications for three of the patents. In 2003, Vertical assigned the original patents and the reissue applications to Negotiated Data Solutions, Inc. (“N-Data”). In 2005 and 2006, well after the agreement expired, the PTO issued reissue patents to N-Data. The issue in this case is whether the agreement, which licenses National patents to Intel, automatically extends to any reissue patents that are derived from those licensed National patents. The CAFC held that the license agreement extends to the full scope of any coverage available by way of reissue for the invention disclosed.
Nicolas Seckel | August 29, 2012
Greenliant Systems, Inc. v. Xicor LLC
August 22, 2012
Panel: Linn, Plager and Dyk. Opinion by Dyk
Xicor obtained a patent claiming a semiconductor device with a tunneling layer formed by low pressure chemical vapor (CVD) deposition using tetraethylorthosilicate (TEOS). Xicor sought and obtained reissue of the patent with device claims that did not recite the use of TEOS. Subsequently, Greenliant sued Xicor for declaratory judgment of invalidity of the reissue claims based on recapture rule, which prohibits recapture via reissue of subject matter surrendered in order to overcome prior art during prosecution of the original patent. The District Court held the reissue claims invalid, and the Federal Circuit affirms. Xicor had repeatedly argued during prosecution of the original patent that the product-by-process limitation of using TEOS imparted structural limitations to the final product. This is sufficient for the recapture rule to apply, even if Xicor now recognizes that the structure of the tunneling layer does not actually depend on the material used for the CVD process, but on deposition conditions such as temperature and pressure.
Dennis Hubbs | May 30, 2012
In Re Roger Youman and Marney Morris
May 8, 2012
Panel: Lourie, Schall and Prost. Opinion by Prost. Dissent by Lourie.
Applicants filed a broadening reissue application within two years of the patent issuing. The examiner rejected the claims because applicants attempted to recapture surrendered subject matter. The Board of Patent Appeals and Interferences (BPAI) affirmed the examiner’s rejection but the Court of Appeals for the Federal Circuit (CAFC) overturned the BPAI ruling and in doing so, clarified the three step process to determine if applicant is barred by the recapture rule.
Interpretation of statutory two-year time limit for enlarging the scope of claim in a continuing reissue application filed after the two-year window
Yoshiya Nakamura | March 14, 2012
In re Erik P. Staats and Robin D. Lash
March 5, 2012
Panel: Dyk, O’Malley and Reyna. Opinion by Dyk. Concurrence by O’Malley.
In 1999, a patent was issued to Staats (assigned to Apple Computer) based on an application for his invention regarding isochronous data transfer in a computer. The patent discloses two embodiments. Staats then filed a first reissue application within two years from the issue date of the patent, broadening the scope of claims related to a first embodiment. Outside the two-year window, he further filed other broadening reissue applications as continuations. In 2007, almost seven years after the original patent issued, the last broadening reissue application was filed, which is related to a second embodiment. The PTO’s board held that the last continuing reissue application was not filed within the two-year window because it was not related to the first embodiment which was timely presented within the two-year window. The CAFC reversed and remanded this case, affirming their precedent case which holds that the statutory two-year limit applies to only the filing date of a reissue application, not to the date that broadened claims are presented.