EXAMINER’S NEW MOTIVATION TO COMBINE REFERENCES MAY CONSTITUTE “NEW GROUND OF REJECTION,” PREVENTING FINALITY OF THE REJECTION
| December 18, 2013
in re Lutz Biedermann – CAFC Opinion
Decided October 18, 2013
Panel: Linn (Opinion author), Moore and O’Malley
Summary
While the Examiner’s motivation to combine prior art references in his rejection was the efficiency of a square thread, the principal reason the Board affirmed the combination of these references was the use of square threads to avoid splaying. The Federal Circuit held that these are different grounds of rejection, and form the bases or underpinnings of different rejections. Therefore, the Federal Circuit found that because the Board made new findings and adopted different reasons to support a new ground of rejection, it had improperly deprived the applicant of both notice and an opportunity to respond.
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Tags: Due process > Motivation > New Ground of Rejection > Notice and Opportunity to Respond > obviousness
Permanent Injunctions: the Federal Circuit’s Causal Nexus Swing
| December 11, 2013
Apple, Inc. v. Samsung Electronics – CAFC Opinion
Decided November 18, 2013
Panel: Judges Prost, Bryson and O’Malley, Opinion by Judge Prost
Summary
The Federal Circuit vacated the California District Court’s denial of permanent injunctive relief against Samsung for its infringement of Apple, Inc.’s smart phone utility patents on the basis of the District Court having abused its discretion by failing to properly analyze evidence of causal nexus pertaining to irreparable harm and the inadequacy of legal remedies. This case is the third appeal to the Federal Circuit in this matter between Apple and Samsung. In 2011, in Apple’s initial infringement suit against Samsung, the jury found that twenty-six (26) Samsung smart phones infringed on six (6) Apple patents, and awarded Apple more than $1 billion in damages. Prior appeals to the Federal Circuit involved appeals related to preliminary injunctive relief (Apple I and II). While the Federal Circuit in prior appeal (Apple II) had rejected the District Court’s award of a preliminary injunction for not having considered the causal nexus requirement, the Federal Circuit now vacates the District Court’s award of permanent injunctive relief for having placed too much emphasis on the causal nexus requirement.
Details
Background:
Upon obtaining the District Court decision, Apple moved for a permanent injunction to enjoin Samsung from importing or selling any of its twenty-six (26) infringing products or any other product not more than colorably different. Apple’s appeal is based on infringement of Apple’s 1) utility patents, 2) design patents and 3) trade dress. On December 12, 2012, the District Court denied the request for a permanent injunction. Here, the Federal Circuit affirmed the denial of permanent injunction for infringement of the design patents and trade dress, but vacated and remanded the denial of permanent injunction for infringement of the utility patents.
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Tags: Causal Nexus > injunction > irreparable harm > permanent injunction
Patent Infringement Litigation as a Double-Edged Sword: Invalidated Patents and Inequitable Conduct
| December 6, 2013
The Ohio Willow Wood Company (OWW) v. ALPS South LLC. (Alps)
Decided November 15, 2013
Before Dyk (Circuit Judge), Bryson (Circuit Judge) and Reyna (Circuit Judge). Opinion by Reyna.
Keywords: collateral estoppel, obviousness, inequitable conduct, reexamination, and rule of reason.
Summary:
OWW initiated a suit against Alps for patent infringement. After a long legal battle including two ex parte reexaminations, two District Court proceedings, and two CAFC appeals, OWW lost two patents and was charged with inequitable conduct.
Details:
OWW is the owner of US Patent No. 5,830,237 (the ‘237 patent), entitled “Gel and Cushioning Devices,” filed on March 5, 1996. The ‘237 patent disclosed cushioning devices designed to cover the residual stumps of amputated limbs, acting as a shape-conforming buffer, as illustrated below, to make the use of attached prostheses more comfortable. The primary invention was a cushion liner comprising a fabric covering in the shape of a tube sock coated on only one side with mineral oil-based polymeric gels.
On December 27, 2004, OWW filed its complaint against Alps for infringement of the ‘237 patent. After the District Court issued its Claim Construction order in the proceedings, Alps filed its first request for an ex parte reexamination of the ‘237 patent. The District Court stayed the litigation for the duration of reexamination proceedings, pending resolution of the validity of the disputed patent.
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Tags: Collateral Estoppel > inequitable conduct > obviousness > reexamination > Rule of Reason
