DarrinAuito : CAFC Alert

CAFC Rejects the Doctrine of “Marking Estoppel”

Darrin Auito | March 27, 2013

Frolow v. Wilson Sporting Goods Co.

March 15, 2013

Panel: Newman, Clevenger and Moore.  Opinion by Moore.  Concurrences by Clevenger and Newman.

Summary:

The CAFC specifically rejected the doctrine of “marking estoppel” – which precludes a party that marks its product with a patent number from asserting that the product is not covered by the patent.  However, the CAFC held that patent marking evidence is “circumstantial” evidence of infringement that could be used to establish infringement or to raise an issue of material fact preventing summary judgment of non-infringement.


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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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If at first you don’t succeed ….

Darrin Auito | May 18, 2012

In Re Baxter International, Inc.

(Reexamination No. 90/007,751)

May 17, 2012

Panel: Newman, Lourie, Moore.  Opinion by Lourie.  Dissent by Newman

Summary

The CAFC’s decision in In re Baxter Int’l, Inc. (Fed. Cir. 2012) highlights the distinction between a reexamination and a district court proceeding.  Specifically, the CAFC affirmed the Board of Patent Appeal and Interferences (“Board”) determination in a reexamination proceeding that claims 26-31 of U.S. Patent No. 5,247,434 (“the ‘434 patent”) are invalid – despite having previously held in a parallel litigation proceeding that the same claims were not invalid – because the courts and the USPTO use different standards to address validity.  However, the CAFC cautioned that had the claims been found to be invalid in the litigation proceeding after all appeals had been exhausted, then the PTO “ideally should not arrive at a different conclusion” during a parallel reexamination proceeding when presented with the same arguments.


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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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