Recapture Issues in a Reissue Application
| May 30, 2012
In Re Roger Youman and Marney Morris
May 8, 2012
Panel: Lourie, Schall and Prost. Opinion by Prost. Dissent by Lourie.
Summary:
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.
Tags: §251 > Broadening > broadening reissue > Error Without Deceptive Intent > Intentional Surrender > Narrowing > recapture > reissue > Reissue Claim
A showing of causal nexus is required between infringement and alleged harm to patentee
| May 23, 2012
Apple, Inc. v. Samsung Electronics Co., Ltd., et al.
May 14, 2012
Panel: Bryson, Prost, and O’Malley. Opinion by Bryson. Concurrence-in-part and dissent-in-part by O’Malley.
Summary
Apple filed suit against Samsung alleging infringement of Apple’s U.S. Design Patent Nos. D593,087 (“the D’087 patent”), D618,677 (“the D’677 patent”), D504,889 (“the D’889 patent”), and U.S. Patent No. 7,469,381 (“the ’381 patent”). Apple’s iPhone embodies the design in the D’087 patent and D’677 patent, and Apple’s iPad embodies the design in the D’889 patent. Both iPhone and iPad embody a software feature known as the “bounce-back” feature of the ‘381 patent. The district court denied Apple’s motion for a preliminary injunction with respect to each of the accused devices and all four asserted patents. Apple appealed. The CAFC affirms the denial of a preliminary injunction with respect to the D’087, D’677, and ’381 patents, but vacates and reminds with respect to the D’889 patent.
アップル社は、サムスン社がアップル社の米国意匠特許第D593,087号（D’087特許）、D618,677号（D’677特許）、D504,889号（D’889特許）と米国特許第7,469,381号（’381特許）を侵害しているとして訴えた。D’087特許及びD’677特許は、アップル社のiPhoneに係わる意匠で、D’889特許は、iPadに係わる意匠である。また、’381特許は、iPhone及びiPadに係わるソフトウェアである。アップル社は、サムスン社のイ号製品について仮差し止めの申し立てをしたが、地裁はこれを却下した。控訴審でCAFCは、D’087特許、D’677特許及び’381特許に関しては地裁の判決を支持したものの、D’889特許についての判決は破棄・差し戻しした。
Tags: design > design patents > evidence > injunction > preliminary injunction
If at first you don’t succeed ….
| 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.
Tags: BPAI > parallel litigation > reexamination > standard of proof > standard of review
Supreme Court Sides with Inventors in Kappos v. Hyatt
| 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.
Tags: appeal > de novo > evidence > procedural issues > standard of review > Supreme Court
Means-Plus-Function: The Achilles’ Heel
| May 9, 2012
Noah Systems, Inc. v. Intuit, Inc.
April 9, 2012
Panel: Rader, O’Malley and Reyna. Opinion by Judge O’Malley
Summary
This decision illustrates that a patent could become invalidated even after surviving challenges of reexamination, which strengthen the presumption of validity, when a challenger discovers the Achilles’ Heel of a means-plus-function claim element resulting in a summary judgment of invalidity by the CAFC. Noah appeals the granting, by the United States District Court for the Western District of Pennsylvania (DC), of Intuit’s Motion for Summary Judgment of Invalidity of USP 5,875,435 (the ‘435 patent) based on indefiniteness for a means-plus-function claim element without the DC hearing evidence of how one of skill in the art would view the specification. The CAFC affirms by finding that the specification discloses no algorithm when the specification discloses an algorithm that only accomplishes one of two identifiable functions performed by the means-plus-function limitation.
Tags: accounting > algorithm > expert testimony > financial > indefiniteness > invalidity > means-plus-function > software > summary judgment > ThomasBrown
BD Stumbles on the Fine Functionality Line between Patents and Trademarks
| May 2, 2012
In Re Becton, Dickinson and Company
April 12, 2012
Panel: Bryson, Clevenger, and Linn. Opinion by Clevenger. Dissent by Linn.
Summary
BD appealed a decision of the USPTO’s Trademark Trial and Appeal Board (TTAB) that a requested trademark registration for a design of a closure cap for blood collection tubes could 
not be trademarked because the design is functional. The CAFC affirmed the TTAB ruling relying heavily on prior BD utility patents and advertisements as evidencing functionality. Attempting to convert functional aspects into a trademark due to acquired secondary meaning will not hold. A company looking to protect a product across multiple forms of intellectual property needs to clearly identify, from the advent of seeking protection, which aspects are considered functional and which are for design purposes. The designation of function and design should be maintained in all ways the product is protected and promoted.
Tags: design > design patents > Trademark > utility patent
