Prosecution Argument Bars Later Recapture Through Broadening Reissue
| August 29, 2012
Greenliant Systems, Inc. v. Xicor LLC
August 22, 2012
Panel: Linn, Plager and Dyk. Opinion by Dyk
Summary:
Xicor obtained a patent claiming a semiconductor device with a tunneling layer formed by low pressure chemical vapor (CVD) deposition using tetraethylorthosilicate (TEOS). Xicor sought and obtained reissue of the patent with device claims that did not recite the use of TEOS. Subsequently, Greenliant sued Xicor for declaratory judgment of invalidity of the reissue claims based on recapture rule, which prohibits recapture via reissue of subject matter surrendered in order to overcome prior art during prosecution of the original patent. The District Court held the reissue claims invalid, and the Federal Circuit affirms. Xicor had repeatedly argued during prosecution of the original patent that the product-by-process limitation of using TEOS imparted structural limitations to the final product. This is sufficient for the recapture rule to apply, even if Xicor now recognizes that the structure of the tunneling layer does not actually depend on the material used for the CVD process, but on deposition conditions such as temperature and pressure.
Tags: broadening reissue > estoppel > prosecution argument > prosecution history estoppel > recapture > reissue > Reissue Claim
Can an open-ended claim range be enabled?
| August 22, 2012
Magsil Corp. and MIT v. Hitachi Global
August 14, 2012
Panel: Rader, O’Malley, Reyna. Opinion by Rader.
Summary
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.
Tags: criticality of ranges > enablement > open-ended claim range > ranges
Fractured CAFC panel again affirms patent eligibility of isolated DNA, and applies Mayo
| August 21, 2012
Association for Molecular Pathology et al. v. U.S.P.T.O. et al.
August 16, 2012
Panel: Lourie, Bryson and Moore. Majority opinion by Lourie, concurrence by Moore, dissent by Bryson.
Less than a month after hearing oral arguments, the CAFC panel of Judges Lourie, Bryson and Moore last week issued an updated decision in the controversial AMP v. USPTO (Myriad genetics) case. The CAFC reached the same conclusion as they did last year: (1) the Plaintiffs do have standing, (2) the isolated DNA and cDNA claims are patent eligible, (3) the “analyzing” and “comparing” method claims are not patent eligible and (4) the screening method claim is patent eligible.
As with the decision last year, the panel reached a unanimous conclusion with respect to the issues of standing, subject matter eligibility of the cDNA claims, and subject matter eligibility of the method claims. However, the panel reached different conclusions with respect to the composition claims which recite isolated DNA. Since the opinions of the Court are very similar to the opinions issued in 2011, this article will focus on the Judges’ views with respect to the impact of Mayo v. Prometheus (English summary; Japanese summary) on the claims in question, and particularly with respect to the isolated DNA claims.
Tags: §101 > bilski > biotech > cDNA > DNA > law of nature > Myriad > patent eligible subject matter > Supreme Court
CAFC reiterates patent eligibility of isolated DNA in the Myriad case
| August 16, 2012
Less than a month after hearing oral arguments, the CAFC panel has issued a decision in the controversial AMP v. USPTO (Myriad genetics case). The CAFC reached the same conclusion as they did last year: (1) the Plaintiffs do have standing, (2) the isolated DNA and cDNA claims are patent eligible, (3) the “analyzing” and “comparing” method claims are not patent eligible and (4) the screening method claim is patent eligible.
We will provide further analysis of the decision in the coming days, including the panel’s reasoning why the Mayo holding is limited to method claims, and does not affect composition claims. Readers should be aware that this is likely not the last word on this case…An en banc rehearing and/or another petition to the Supreme Court are very likely.
The full opinion can be read here:
http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1406.pdf
Tags: §101 > biotech > Myriad > patent eligible subject matter
Using Trademark in Categories Other than the One as Filed May Result in Abandonment
| August 15, 2012
LENS.COM, INC. v. 1-800 CONTACTS, INC.
August 3, 2012
Panel: Newman, Linn and Moore. Opinion by Linn.
Summary
Lens.com, Inc. (“Lens.com”) appeals a decision of the Trademark Trial and Appeal Board (“Board”) granting a motion for summary judgment by 1-800 Contacts, Inc. (“1-800 Contacts”) and ordering the cancellation of Lens.com’s registration for the mark LENS due to nonuse. The mark was filed to be used in connection with computer software, but the business of Lens.com is in the field of retail sales of contact lenses. The issue at dispute is whether software incidentally distributed in connection with retail business in the context of an internet service constitutes a “good in commerce.” The court applies a three-prong test established in non-internet-related case law to the current case in finding nonuse of the mark, and distinguishes the current case from an Eleventh Circuit decision.
Lens.com公司就商标裁决上诉委员会批准关于注销 LENS 商标登记的动议提出上诉。 该动议由1-800 Contacts公司提出，称lens.com已停止使用该商标。该商标注册为“计算机软件相关业务”的商标，而Lens.com仅在隐形眼镜零售领域开展业务。该案中的争议问题是互联网零售业务中偶尔附带发送的软件是否构成“商品”。法院利用了建立在非互联网相关案件的判例法上的“三因素测试”认定该商标已停止使用， 并且将本案与第十一巡回法庭判决的一个互联网相关案件加以对比区分。
Tags: abandonment > cancellation > Trademark > use in trade
