In case of first impression, the CAFC determines that the principles of prosecution history estoppel apply to design patents.
| January 31, 2014
Pacific Coast Marine v. Malibu Boats, LLC
Decided January 8, 2014
Before Dyk, Mayer, and Chen. Opinion by Dyk.
Summary
Bach’s original design patent application included multiple embodiments of a marine windshield. The Examiner issued a restriction requirement, in response to which Bach elected the first embodiment, canceled the other four, and filed a divisional for the third embodiment only. After the patent issued, Bach assigned it to Pacific Coast, which sued Malibu Boats for infringement. The Malibu Boats windshield differed slightly from the patented embodiment, as well as the non-elected embodiments. The district court granted Malibu Boats’ motion for partial summary judgment of non-infringement on the grounds of prosecution history estoppel, finding that “that, during prosecution, the applicant had surrendered the designs reflected in the canceled figures and amended the claim ‘in order to obtain the patent.’” The CAFC reversed, holding that although “there was a surrender of claim scope during prosecution,” the accused design was not “within the scope of the surrender.”
Weak Prima Facie Case Obviousness vs. Strong Evidence of Non-Obviousness
| January 22, 2014
Institute Pasteur v. Focarino (Fed. Cir. 2013)
(2012-1486)
Decided December 30, 2013
Before NEWMAN, CLEVENGER, and TARANTO, Circuit Judges. TARANTO, Circuit Judge.
Key Words: non-obviousness, biotechnology, enzyme, reasonable expectation of success
Summary:
Institute Pasteur (Pasteur) owned patents claiming inventions related to a group of enzymes, i.e., Group I intron-encoded (GIIE) endonucleases. The enzymes are useful as laboratory tools to cut a DNA sequence at a particular site of the sequence in vitro or in situ. In reexamination of the patents, the Board of Appeals rejected the claims as being obvious over cited references. Pasteur appealed to the CAFC. The CAFC vacated the Board decision and remanded for consideration of what would constitute motivation for one skilled in the art to pursue the claimed invention because the Board misread the teachings in prior art and failed to weigh properly substantive evidence of non-obviousness.
Read More/続きを読む
Federal Circuit Restricts ITC Remedies for Induced Infringement
| January 14, 2014
Suprema and Mentalix v Int’l Trade Comm’n – CAFC Opinion
Decided December 13, 2013
Prost; O’Malley; Reyna. Opinion by O’Malley; Dissent by Reyna.
Summary:
The CAFC found that the ITC cannot issue an exclusion order based solely on induced infringement under circumstances in which the underlying direct infringement of an asserted method patent necessarily does not take place until after importation of the contested article. Where direct infringement does not exist or occur before or during importation, the ITC does not have the authority to remedy acts of induced infringement alone, under such circumstances where direct infringement of the claimed method of the asserted patent occurs post-importation: the imported goods are not, in and of themselves, infringing articles before or while they are being imported into the U.S. While the Court’s majority emphasizes the circumstance-specific implications of its decision, the dissenting opinion by Circuit Judge Reyna raises concern that the distinctions articulated by the Court would, in effect, overturn decades of practice by the ITC conducting Section 337 investigations into respondents who actively induce post-importation infringement by their products, and similarly allow for infringers to circumvent ITC authority, accordingly.
