“Ordinary Designer” Standard Should Be Used in Design Patent Obviousness Analysis
| October 24, 2013
High Point Design LLC, et al. v. Buyer’s Direct, Inc.
September 11, 2013
Panel: O’Malley, Schall, and Wallach. Opinion by Schall
Summary
This case addresses obviousness and functionality analysis for design patents. The CAFC stated that the obviousness of a design patent must be analyzed from the perception of a designer of ordinary skill in the field to which the design pertains. With regards to functionality, a design that can perform functions can be protected under design patent so long as the claimed design is “primarily ornamental” and not “primarily functional.”
意匠特許の自明性を判断する場合には、その意匠の分野の当業者の観点から分析を行うことが必要とされる。また、機能的な要素を有する意匠でも、その意匠が主として機能的ではなく、主として装飾的であれば、意匠特許の対象となる。
Tags: Design Patent > Functionality > obviousness
Beware of Relying on a Single Example, Since It May Limit Claim Scope
| October 17, 2013
Sunovion Pharmaceuticals, Inc. v. Teva Pharmaceuticals, et al.
September 26, 2013
Panel: Lourie, Schall and Reyna. Opinion by Lourie
Summary
In this case arising from an ANDA, the claims recited the vague term of “essentially free of”, which was undefined by the specification. Although probably never intended to limit the scope of the claims, the CAFC held that the content of the sole substantive example in the specification and a declaration citing this—which was heavily relied upon during prosecution—defined the scope of this ambiguous term. However, the patent owner managed to win the litigation nonetheless, due to the CAFC recognizing the ineffectiveness of an unconventional “certification” of non-infringement to the district court which contradicted the defendant’s FDA filing.
The Great IBM Escape
| October 14, 2013
Tecsec, Inc. v. Int’l. Business Machines et al. (2012-1415)
October 2, 2013
Panel: Moore, Linn, and Reyna. Opinion by Linn. Dissent by Reyna.
Summary
Following an earlier affirming of an Eastern District of Va. decision granting IBM Summary Judgment, TecSec stipulated that it could not prove infringement by the remaining defendants under the claim construction adopted during the IBM proceedings. Based on TecSec’s stipulation, the district court entered judgment of noninfringement as to the remaining defendants (a “who is who” of the server industry, including EBay, Cisco, Sun, Oracle, Paypal, Adobe and others). The CAFC reversed, finding that the Mandate Rule and Collateral Estoppel did not apply to claim construction adopted during the IBM proceeding. The CAFC then ruled on issues of claim construction and computer implemented means-plus-function terms, finding that the terms either were not means-plus-function under §112¶6 or that sufficient structure was presented in the specification in the form of three detailed examples.
Tags: computer-implemented means-plus-function > specification examples
CAFC Reminds the Patent Office to Play Fair When Issuing New Grounds of Rejection and Evaluating Objective Evidence of Non-Obviousness
| October 3, 2013
Rambus Inc. v. Rea
September 24, 2013
Panel of Moore, Linn, and O’Malley, Opinion by Moore
Summary
The Court of Appeals for the Federal Circuit in Rambus Inc. v. Rea reminds Examiners and the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) that procedural checks remain in place for issuing new grounds of rejection. Examiners and the Board cannot bury a new ground of rejection in a decision, without ensuring that a patent applicant has had a fair opportunity to respond to the rejection. Indeed, whether the applicant has had a fair opportunity to react to the thrust of the rejection is reiterated as the ultimate determination of whether a rejection is considered “new”.
In line with the Federal Circuit’s recent decision in Leo Pharmaceutical Products v. Rea, Rambus is also a reminder that objective evidence of non-obviousness must be given due consideration and weight. Examiners and the Board cannot undercut an applicant’s objective evidence of non-obviousness through an overly stringent interpretation of the nexus and “commensurate in scope” requirements.
