Will the Marine Polymer Expansion of Intervening Rights be Reversed?
| 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.
Joint Inventorship of a novel compound may exist even if co-inventor only developed method of making
| January 25, 2012
Falana v. Kent State University and Alexander J. Seed
January 23, 2012
Panel: Linn, Prost and Reyna. Opinion by Linn.
Summary
The CAFC held that a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound. One may be a joint inventor even if co-inventor’s contribution to conception is merely a method of making the claimed product and said co-inventor does not synthesize the claimed compound.
Tags: claim construction > damages > exceptional case > inventorship > joint inventorship
KSR Reigned In For A Preliminary Injunction
| January 18, 2012
Celsis in Vitro, Inc. v Cellzdirect, Inc. and Invitrogen Corp.
January 9, 2012
Panel: Rader, Gajarsa, and Prost. Opinion by Rader; Dissent by Gajarsa.
Summary:
While Rader’s majority opinion affirmed the district court’s grant of a preliminary injunction despite defendant’s obviousness challenge, Gajarsa’s dissenting opinion asserts that the majority’s decision disregards the Supreme Court’s KSR flexible guidelines regarding the finding of obviousness in the mere repetition of well-known techniques to achieve a desired result, and in the application of “obvious to try.” Gajarsa’s dissent also notes that this is a preliminary injunction, and the standard is not whether defendant has shown obviousness by clear and convincing evidence, but rather, whether defendant has shown a “substantial question of invalidity” to defeat a preliminary injunction. Perhaps, the strongest position for the majority opinion is its consideration of the showing of a “teaching away” in the record, as well as deference given to the district court’s determinations of credibility of the parties’ expert witnesses.
Tags: common sense > injunction > KSR > obvious to try > obviousness > preliminary injunction > teaching away
Infringement Argument Contradicting Prosecution History and Based On Unreliable Expert Testimony Can Make The Case “Exceptional” Incurring Opponent’s Attorneys Fees
| January 11, 2012
MarcTec, LLC v. Johnson & Johnson and Cordis Corp.
January 3, 2012
Panel: Newman, Prost and O’Malley. Opinion by O’Malley.
Summary
The CAFC affirmed the district court’s award of attorney fees and expert fees under 35 U.S.C. § 285. During prosecution of the application, Applicant amended the claims to make clear that his invention required the application of heat to a heat-bondable material. Applicant also distinguished the surgical device from stents in order to obtain allowance. Patentee alleged infringement by accused stents having a coating sprayed at room temperature. Patentee further argued that accused product’s coating is, in fact, bonded by heat. In support of this position, Patentee offered expert testimony that spraying the coating at nearly the speed of sound would cause an increase in temperature such that heat is involved in bonding the coating to the stent. The expert testimony also alleged that heat is used in some of the manufacturing steps before the coating is sprayed onto the accused product. The court held that Patentee’s argument was baseless and frivolous and that Patentee acted in bad faith in bringing and pressing this suit.
CAFCは、米国特許法285条の例外的なケースとして相手方の弁護士費用と専門化証人の費用の支払いを命じた地裁の決定を維持した。問題の特許の審査過程において、出願人は、クレームを補正して、発明が熱を適用して結合する点で先行技術と異なることを主張し、また、本発明は、先行技術の血管を拡張するステントとは異なると主張した。この事件で特許権者は、常温でスプレーコーティングした被疑侵害者のステントを特許侵害で提訴した。そして、被疑侵害者のステントのコーティングにおいて熱が適用されていると主張した。特許権者の専門家証人は、音速に近いスプレーは温度上昇を伴うと主張し、また、スプレーコーティングの前に熱を使う工程があることもその根拠とした。裁判所は、特許権者の主張は根拠のない軽薄なものであり、不誠実なものであると判示した。
More on Typhoon: Knowledge in the Art as a Factor in Determining Sufficiency of Corresponding Algorithm
| January 4, 2012
Since the CAFC was relatively quiet last week due to the holidays, this week we revisit Typhoon, which we discussed in our post last week. In the second half of this case, the CAFC continued their review of the district court’s claim interpretation. The CAFC reviewed the MPF claim term “means for cross-referencing responses to said inquiries with possible responses from one of said libraries.” The CAFC chose to emphasize a 1985 case, Shatterproof Glass, in indicating that the amount of detail required in the specification is related to the existing knowledge in the field of endeavor.
