BillSchertler : CAFC Alert

Did the CAFC Extrapolate From the Teachings of the References to Reach the Conclusion of Obviousness?

Bill Schertler | August 12, 2013

In re Adler

July 18, 2013

Panel:  Prost, Reyna and Wallach.  Opinion by Wallach


The Examiner rejected all of the pending claims under 35 U.S.C. §103 as obvious over several prior art references, including International Patent Publication WO 00/22975 (“Meron”) in view of Masaru Hirata et al., Study of New Prognostic Factors of Esophageal Variceal Rupture By Use of Image Processing With a Video Endoscope, 116 Surgery 8–16 (1994) (“Hirata”).

The Board of Patent Appeals and Interferences (“the Board”) affirmed the Examiner’s rejection of all pending claims of U.S. Patent Application No. 10/097,096 (the ‘096 application) under 35 U.S.C. §103 as being obvious over a combination of prior art references.  Adler appealed the Board’s decision to the Court of Appeals for the Federal Circuit (CAFC).  The CAFC affirms holding that the Board did not err in rejecting the pending claims as obvious and did not rely on new grounds for rejection.

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Board Should Consider Appellee’s Grounds For Affirming Rejection Presented To Examiner During Reexamination, Even If Grounds Had Not Been Raised On Appeal

Bill Schertler | February 6, 2013

Rexnord Industries v. Kappos

January 23, 2013

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


In 2003 Habasit filed an infringement suit against Rexnord in the United States District Court for the District of Delaware for infringement of its U.S. Patent No. 6,523,680 (the ’680 patent).  Rexnord then requested inter partes reexamination of the ’680 patent, and the district court stayed the infringement suit pending completion of reexamination.

On reexamination, the examiner held all of the claims in the ’680 patent unpatentable for anticipation and obviousness.  Habasit appealed the examiner’s decision to the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board).  On appeal, the Board reversed the examiner’s decision and held the claims patentable.

Rexnord appealed to the CAFC.  The CAFC affirmed that the claims are not anticipated, and reversed the Board’s determination that the claimed invention is not obvious in view of certain prior art.

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Can an open-ended claim range be enabled?

Bill Schertler | August 22, 2012

Magsil Corp. and MIT v. Hitachi Global

August 14, 2012

Panel:  Rader, O’Malley, Reyna.  Opinion by Rader.


The U.S. District Court for the District of Delaware granted summary judgment finding claims 1-5, 23, 26 and 28 of appellants’ U.S. Patent No. 5,629,922 (the ‘922 patent) invalid as a matter of law for lack of enablement and therefore non-infringed.  At issue was whether the specification enabled the broad scope of the claimed “open-ended” range of values having a lower threshold, but no upper limit, defined by “a change in the resistance by at least 10% at room temperature”.

Magsil appealed the district court’s decision.  On appeal, the CAFC affirmed the district court’s finding that claims 1-5, 23, 26 and 28 of the ‘922 patent are invalid for lack of enablement.

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CAFC invalidates claims directed to a method of creating a real estate investment instrument as unpatentable abstract idea

Bill Schertler | March 7, 2012

Fort Properties, Inc. v. American Master Lease LLC

February 27, 2012

Panel:  Prost, Schall and Moore.  Opinion by Prost


American Master Lease (“AML”) threatened Fort Properties with an infringement lawsuit for infringement of U.S. Patent No. 6,292,788 (the ‘788 patent) and Fort Properties filed an action in the U.S. District Court for the Central District of California asking for a declaratory judgment of invalidity.  In a decision prior to the Supreme Court’s Bilski v. Kappos decision, the district court granted summary judgment in favor of Fort Properties, finding all claims of the ‘788 patent invalid for failing the machine-or-transformation test.  On appeal, the Federal Circuit affirmed – finding the claimed invention unpatentably abstract.
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