ScottDaniels : CAFC Alert

Instruction from PTO on Software Composition Claims

Scott Daniels | August 28, 2013

Ex parte Mewherter, 2012-007962 (PTAB, 2013)

The Patent Office rarely designates decisions of the Patent Trial and Appeal Board as being “precedential,” but when it does, practitioners take note.  The Patent Office’s designation last week of Ex parte Mewherter, 2012-007692 as falling in that category will be of particular interest to those handling software patent applications. 
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CAFC Reverses Trial Court’s Indefiniteness Ruling

Scott Daniels | May 9, 2013

Biosig Instruments v. Nautilus

April 26, 2013

Panel: Wallach, Schall and Newman.  Opinion by Wallach. Concurrence by Schall.

Summary

The Court of Appeals for the Federal Circuit rarely finds patent claims to be so indefinite that the they are invalid under 35 U.S.C. § 112, ¶ 2.  This historical proclivity was on display last in the CAFC’s decision in Biosig Instruments V. Nautilus.  There, the Court reversed a summary judgment of invalidity for indefiniteness, concluding that the claim was “amenable to construction” and not ‘insolubly ambiguous.”


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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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CAFC does not find means-plus-function in a “height adjustment mechanism”

Scott Daniels | November 7, 2012

Flo Heathcare Solutions v. Kappos

October 23, 2012

Panel: Newman, Plager, and Wallach.  Opinion by Wallach.

PROCEDURAL SUMMARY

The patentee sued the defendant for infringement.  The defendant then requested inter partes reexamination of the patent.  The trial judge stayed the infringement action, pending completion of the reexamination.  The patent reexamination examiner and the Patent Office Board rejected the claims as being anticipated by the prior art.  On appeal, the CAFC disagreed with the PTO Board’s claim construction; but even under the CAFC’s claim construction, it found that the claims were anticipated and therefore affirmed the PTO’s rejection of the claims


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Will the Marine Polymer Expansion of Intervening Rights be Reversed?

Scott Daniels | January 30, 2012

A few days ago the CAFC issued a notice that it would review, en banc, last September’s 2-1 panel decision in Marine Polymer v. HemCon, specifically the holding that absolute intervening rights arise where a patentee narrowly construes its claims in reexamination, thereby “effectively amending” those claims, even without an actual amendment of the claims.  See 35 U.S.C. §§ 252 and 307(b).  Such intervening rights, of course, eliminate all damages for the period before the issuance of the reexamination certificate concluding the reexamination.  Until Marine Polymer, only a single trial had found intervening rights derived from argument alone.

There was, however, a dissent by Judge Alan Lourie who did not accept the “amendment in effect” argument.  For him, there is “threshold requirement in §§ 307(b) and 316(b) that intervening rights apply only to amended or new claims.”  Since that threshold requirement was not satisfied, there could be no intervening rights, Judge Lourie argued.


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