Claimed inventions of a reissue patent must be clearly and unequivocally disclosed in the original specification
| December 17, 2014
Antares Pharma, Inc. v. Medac Pharma Inc., et al.
November 17, 2014
Panel: Dyk, Reyna, and Taranto. Opinion by Dyk.
Summary
The Federal Circuit found the asserted reissue claims invalid for failure to comply with the “original patent” requirement of 35 U.S.C. § 251. Under § 251, the original patent specification must adequately disclose the later-claimed features. Here, the Federal Circuit found that the original specification failed to clearly and unequivocally disclose the inventions of the asserted claims of the reissue patent.
連邦巡回裁判所は、原告が主張する再発行特許のクレームは特許法第251条の要件を満たしていないため無効であると認定した。251条の規定により、元の明細書は、再発行特許のクレーム発明を開示している必要がある。本件では、再発行特許のクレーム発明が元の明細書において明確に開示されていなかった。
Upon Further Review, the Ruling on the Field Stands – Federal Circuit Sustains PTO’s Refusal to Withdraw Terminal Disclaimer
| December 10, 2014
Japanese Foundation for Cancer Research v. Lee
December 9, 2014 (Federal Circuit)
Panel: Prost, Dyk, Taranto. Opinion by Prost
Summary
In Japanese Foundation for Cancer Research v. Lee (2014), the Federal Circuit reversed the district court’s determination on summary judgment that the United States Patent & Trademark Office (“PTO”) acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw a terminal disclaimer on U.S. Pat. No. 6,194,187 (“’187 patent”). The Federal Circuit held that the PTO did not act arbitrarily or capriciously, or abuse its discretion in declining to use any inherent authority that it may have in withdrawing the terminal disclaimer on the ’187 patent that the Japanese Foundation for Cancer Research’s (“Foundation”) attorney of record filed in accordance with the PTO’s regulations.
Surviving Alice Gone Wild
| November 26, 2014
Before the Supreme Court’s decision in Alice Corp. v CLS Bank Int’l [1], Judge Moore said “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”[2] This concern is premised on about twenty years of patent practice grounded in the en banc 1994 Federal Circuit decision in In re Alappat which previously established the “special purpose computer” justification for patent eligibility under 35 USC §101 for computer-implemented inventions.[3] The Alice decision essentially eliminated the “special purpose computer” bright line rule as applied generally to computer-implemented inventions. The new Mayo 2-part §101 test for computer-implemented inventions is, however, fraught with issues from the lack of guidance on how to properly apply it. Some strategic arguments for surviving a §101 attack are presented in this article, as well as a new way to address what is “significantly more.”
Tags: 101 > abstract idea > Alice > CLS Bank > computer > means plus function > patent eligible subject matter > preemption > Section 101 > software
CAFC redefines the singular phrase “a patient” as a plural patient population
| November 18, 2014
Braintree Laboratories, Inc. v. Novel Laboratories, Inc.
April 22, 2014
Panel: Dyk, Prost Moore. Majority opinion by Prost. Concurrence by Dyk. Dissent by Moore.
Summary
In this ANDA litigation, the claims recited a composition for purgation of the colon of “a patient”. The majority imported the preamble phrase of “a patient” into the claim, and also interpreted this as not a single patient, but rather a “patient population”. Judge Moore dissented on this point. Additionally, Judge Dyk dissented on the grounds that the majority based its analysis on an accused infringing product different from the subject of the ANDA application, contrary to Hatch-Waxman rules.
HARVARD/DUPONT’S CANCER MOUSE PATENT NIXED BY PARENT PATENT’S TERMINAL DISCLAIMER
| November 11, 2014
President and Fellows of Harvard v. Lee
October 29, 2014
Panel: Lourie, Moore and O’Malley. Opinion by Moore
Summary
Harvard/DuPont appealed the Virginia Eastern District’s Summary Judgment grant of the USPTO’s finding of their cancer mouse patent (USP 5,925,803) expired due to a terminal disclaimer filed in the parent patent disclaiming term for any future patents. Harvard/DuPont argued that the terminal disclaimer was not properly entered because the requisite fee was not paid and therefore ineffective. The Federal Circuit affirmed the USPTO’s finding on the basis that the ruling was not arbitrary, capricious, an abuse of discretion, or contrary to law under the APA standard.
NEGOTIATION IN THE U.S. IS NOT SALE OR OFFER FOR SALE WITHIN THE U.S. UNDER §271(a) WHEN SUBSTANTIAL SALES ACTIVITIES OCCUR OUTSIDE THE U.S.
| November 11, 2014
Halo Electronics, Inc. v. Pulse Electronics, Inc. (Precedential Opinion)
October 22, 2014
Panel: Lourie, O’Malley, and Hughes. Opinion by Lourie
Summary
Halo Electronics (“Halo”) owns U.S. Patent No.5,656,985 and other patents of electronic packages. Halo sued Pulse Electronics (“Pulse”) for patent infringement. Pulse manufactures, sells and delivers electronic packages only outside the United States [for the purpose of the summary judgment]. All purchase orders were received at Pulse’s sales offices abroad. However, Pulse negotiated with Cisco in the United States regarding the price for Cisco’s foreign contract manufacturers. The district court granted summary judgment of no direct infringement as to the products that Pulse manufactured, shipped, and delivered outside the United States.
CAFC held that the district court did not err in granting summary judgment of no direct infringement because those products were neither sold nor offered for sale by defendant within the United States.
Note) Some other issues are involved in the case, but this report focuses only on the appeal of the summary judgment.
Halo社は、電子回路パッケージに関する米国特許5,656,985号その他の特許権者である。Haro社はPulse社を特許侵害で訴えた。Pulse社はその殆どの製品を米国外で製造、販売、配送を行っていた。注文も米国外のPulseの販売事務所で受けていた。
しかし、Pulse社は、米国のCisco社と価格の交渉をしていた。それは、米国外のCisco社の契約メーカーへの販売価格に関するものであった。地裁は、Pulse社が米国外で製造、販売、配送を行っていた製品に関して、米国内での販売又は販売の申し出はないとして、非侵害のサマリ・ジャジメントを下した。
CAFCは、製品の米国内での販売又は販売の申し出はないとして、地裁のサマリ・ジャジメントは誤りではないとして維持した。
Laches: a viable defense against patent infringement, but for how long?
| October 16, 2014
SCA Hygiene Products Aktiebolag v. First Quality Products, LLC
Summary:
SCA owns U.S. Patent No. 6,375,646 (the ‘646 patent) for adult incontinence products.
October 31, 2003: SCA sent a warning letter to First Quality, stating that SCA believes First Quality’s pants-type diapers infringe the ‘646 patent, and asking First Quality to either explain why the products do not infringe, or give assurance that First Quality will stop making and selling the products if First Quality believes the products to infringe the patent.
November 21, 2003: First Quality responded by letter, stating that prior art U.S. Patent No. 5,415,649 (the ‘649 prior art patent) invalidates the ‘646 patent.
July 7, 2004: SCA filed a request for ex parte reexamination of the ‘646 patent over the ‘649 prior art patent, but did not notify First Quality about the reexamination.
March 27, 2007: The PTO confirmed the patentability of all the original claims of the ‘646 patent and also granted new claims added during the reexamination.
August 2, 2010: SCA filed suit against First Quality for infringement of the ‘646 patent (six years and nine month after sending the warning letter, and more than three years after the conclusion of the reexamination.) First Quality counterclaimed for declaratory judgment of non-infringement and invalidity. After the district court’s claim construction order, First Quality moved for partial summary judgment of non-infringement, and summary judgment for laches and equitable estoppel. The district court granted summary judgment for laches and equitable estoppel, and dismissed the remaining motion as moot. SCA appealed.
The conclusion about laches or equitable estoppel is “committed to the sound discretion of the trial judge.” Therefore, the standard of review of those conclusions by the CAFC is “abuse of discretion” by the trial judge. Since the underlying elements of laches and equitable estoppel are questions of fact, the CAFC reviews those findings of fact for “clear error.” However, when summary judgment has been granted, the CAFC reviews the factual elements de novo to determine whether any “genuine issues of material fact remain.”
Be Mindful that the Potential Reach of Claimed Components under the Doctrine of Equivalents Can Be Affected by Amendments to Claimed Sub-Components.
| October 9, 2014
EMD Millipore Corporation v. Allpure Technologies, Inc. (Precedential Opinion).
September 29, 2014
Panel: Prost, O’Malley and Hughes. Opinion by Prost.
Summary
EMD Millipore Corporation (Millipore) appeals the District of Massachusetts decision that the accused infringer, Allpure Technologies, Inc. (Allpure) does not infringe its U.S. Patent No. 6,032,543 entitled a Device for Introduction and/or Withdrawal of a Medium into/from a Container, either literally or under the doctrine of equivalents. The Federal Circuit affirmed that there was no literal infringement because the claims required a removable transfer member having a two part seal connected after removal, while the Allpure device had two parts of a seal separated after disassembly. In addition, the Federal Circuit held that Allpure did not infringe under the doctrine of equivalents due to prosecution history estoppel based on narrowing amendments limiting the transfer member to such a two part seal, along with a lack of any argument that the reasons for such amendments was not a substantial one related to patentability.
Tags: doctrine of equivalents > infringement > literal infringement > prosecution history estoppel
Inequitable Conduct under the Therasense Standard
| October 1, 2014
American Calcar, Inc. v. American Honda Motor Co., Inc.
September 26, 2014
Panel: Prost, Newman and Wallach. Opinion by Prost. Dissent by Newman.
Summary:
American Calcar, Inc. (“Calcar”) sued American Honda Motor Co., Inc. (“Honda”) for infringement of fifteen patents, three of which are involved in this case. The three patents are related by a common priority application and share a common specification. The patents deal with a multimedia system for accessing vehicle information and controlling vehicle functions. The parent application disclosed and explicitly referred to a system used in the 1996 Acura RL. However, Honda alleged that Calcar deliberately withheld the 1996 Acura RL owner’s manual and photographs taken of the system that were in Calcar’s possession. The district court found the missing information to be material under the “but for” materiality standard and found that the missing information was intentionally withheld based on the “single reasonable inference” standard. The CAFC affirmed the district court’s finding.
What Do a Resealable Cartridge for Low Pressure Liquid Chromatography and a Soda-Pop Bottle and Cap Have In Common?
| September 23, 2014
Scientific Plastic Products, Inc., v. Biotage AB.
September 10, 2014
Panel: Newman, Moore and Wallach. Opinion by Newman. Dissent by Moore.
Summary
The CAFC affirmed the Patent Trial and Appeal Board’s decision that all claims of the three disputed patents held by Scientific Plastic Products, Inc. (SPP) would have been obvious.
The CAFC held that the cited references, King and Strassheimer, both of which related to the sealing of a beverage container, were available as prior art against the claimed resealable cartridge for low pressure liquid chromatography (LPLC).
The CAFC held that although the cited reference Yamada failed to explicitly disclose a leakage problem, by “providing for the presence of an O-ring,” Yamada implicitly acknowledged that there is the potential for a leak. Further, the CAFC concluded that the inventors, in the patents in question, identified that the potential for leaks is a “known problem.”
Accordingly, the CAFC found adequate reason for one of ordinary skill in the art to turn to King or Strassheimer to improve the sealing arrangement set forth in Yamada.
« Previous Page — Next Page »
