Applicant’s failure to request claim construction under §112, 6th paragraph may invoke waiver of such claim construction
| January 23, 2013
In re Avid Identification Systems, Inc.
January 8, 2013
Panel: Lourie, Clevenger and Bryson. Opinion by Lourie. Dissent by Clevenger.
Summary:
The Examiner rejected claims of a patent at issue, and the PTO board maintained the rejection finding that a means-plus function limitation was found in prior art where its broadest reasonable meaning was given. CAFC affirmed the PTO decision, and denied the Applicants’ request for a claim construction under § 112, 6th paragraph, instead of the broadest reasonable interpretation. CAFC reasoned that the Applicants waived that claim construction by failing to raise the issue during the procedure in the PTO. The dissenting opinion pointed out that the claim construction according to § 112, 6th paragraph is mandatory as the statutory requirement where the claim term clearly invokes the application of § 112, 6th paragraph.
出願人はクレームが自明であるとして拒絶した特許庁審判部の判断を不服として、CAFCに控訴した。問題のクレームには、ミーンズプラスファンクション(”means for”の用語を用いた限定 )を記載がある。そのような記載があると通常、特許法112条第6パラグラフの適用があり、その機能限定は明細書に開示されている構造もしくはそれと均等な構造を記載していると限定解釈される。しかしながら、本件では、特許庁審査官および審判部は、そのミーンズプラスファンクションの限定を、一般的な構造限定のときのように合理的な範囲で最も広い意味(broadest reasonable meaning)の基準を用いて解釈した。この広い解釈に基づいてその機能限定は先行技術に記載されていると特許庁は判断した。この経緯に関してCAFCは、出願人は特許庁の手続きにおいて112条第6パラグラフの適用を自ら主張しなかったためその機会を放棄したと判断し、出願人の主張を退けた。CAFC裁判官の1人は、112条第6パラグラフの適用は制定法上の要求であり、出願人や審査官が同法に基づく限定解釈を要求しなくても先ずその解釈を採用すべきであるとの反対意見を述べた。
Tags: means > means-plus-function > procedural issues > waiver
The Non-Obviousness of Obviousness Determinations: Even In Simple Technologies, It Can Be Difficult to Draw a Line in Obviousness Determinations
| January 9, 2013
C.W. Zumbiel Company, Inc. v. Kappos and Graphic Packaging International, Inc.
December 27, 2012
Panel: Prost, Moore, and Wallach. Opinion by Wallach. Dissent byProst.
Summary:
This appeal arises out of an Inter Partes Reexamination before the Board of Patent Appeals and Interferences, the decision. Both the patentee and the third-party requester appealed the Board’s decision, which indicated that certain claims were obvious and certain claims were nonobvious. In this case, the Federal Circuit affirmed the Board’s entire decision. The technology at issue involved a carton for a pack of cans (such as, e.g., soda cans) having a perforated flap portion that is torn and folded down to dispensing the cans. This case highlights that even in non-complex technologies, it can be difficult to draw a line in obviousness determinations, and how when there are little possible variations in structure, if such variations lead to predictable results obviousness may be found (such as here in, e.g., claim 1), but that when there are little possible variations in structure, if other factors such as teaching away in the art, lack of incentive for such a modification exist, nonobviousness may be found (such as here in, e.g., claim 2).
Vitiation exclusion: a judicial determination ensuring that doctrine of equivalents does not overtake statutory function of claims in defining scope of exclusive rights
| January 2, 2013
Deere & Co. v. Bush Hog
December 4, 2012
Panel: Rader, Newman and Plager. Opinion by Rader.
Summary
The United States District Court for the Southern District of Iowa, among other things, construed the claimed term “into engagement with” of ‘980 Patent to require direct contact and construed “being secured to” of ‘980 Patent as “fastened or attached.” Based on this construction, the district court granted Bush Hog & Co. LLC’s and Great Plains Inc.’s motions for summary judgment of noninfringement by holding that Deere did not raise a genuine issue of material fact as to literal infringement because the upper deck walls do not come into contact with the lower deck walls in any of the accused products. In addition, the district court held that Deere could not assert infringement under the doctrine of equivalents because doing so would vitiate the “into engagement with” limitation. Because in the context of the ‘980 Patent “into engagement with” encompasses indirect contact, the Federal Circuit vacated the district court’s construction of this term, reversed the grant of summary judgment, and remanded for further proceedings. Also, the Federal Circuit found that the district court invoked vitiation exclusion in error by refusing to apply the doctrine of equivalents because “a reasonable jury could find that a small spacer connecting the upper and lower deck walls represents an insubstantial difference from direct contact.” Therefore, the Federal Circuit also vacated the grant of summary judgment of no infringement under the doctrine of equivalents.
Tags: all elements rule > doctrine of equivalents > infringement > literal infringement > vitiation
Dealing with Different Embodiments of the Specification
| December 26, 2012
Sandisk Corp. v. Kingston Tech. Co., Inc.
October 9, 2012
Panel: Prost, Reyna and Wallach. Opinion by Prost. Dissent by Reyna.
Summary
The claim construction of the term “relative time” caused the issue whether one of two different embodiments of the specification should be excluded from the scope of literal infringement. The district court excluded the second embodiment, focusing on the claim term “time.” CAFC disagrees, emphasizing the significance of the claim term “relative.” Judge Reyna dissents.
明細書が2つの実施例を含んでいる場合に、クレームの文言が両方の実施例をカバーしているのか、それとも片方の実施例は除外されるべきかが問題となった事件である。この問題は、クレームに記載された「相対的な時間」(relative time)の文言解釈をどのように行うかによって判断が分かれた。地裁ならびにdissent(反対意見)は、クレームの「時間」(time)を厳格に解釈して第2実施例を除外すべきと判断した。CAFCは、クレームの「相対的」(relative)に重きを置き、第2実施例を除外すべきでないと判断した。「両方の実施例がクレームでカバーされる」という一言が明細書に含まれていれば、この問題は回避できたと思われる。
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Tags: claim construction > exclusion of embodiment > multiple embodiments
License agreement to a patent may extend to a corresponding reissue patent
| December 19, 2012
Intel Corp. v. Negotiated Data Solutions, Inc.
December 17, 2012
Panel: Prost, Wallach and Linn. Opinion by Linn.
Summary
Intel and National Semiconductor Corp. (“National”) entered into a cross-licensing agreement. The agreement gave Intel rights to National’s patents and patent applications having an effective filing date during the period in the agreement which lasted from 1976 to 2003. This case deals with four patents that were covered under the agreement. National assigned these patents to Vertical Networks, Inc. (“Vertical”) in 1998. Vertical then filed broadening reissue applications for three of the patents. In 2003, Vertical assigned the original patents and the reissue applications to Negotiated Data Solutions, Inc. (“N-Data”). In 2005 and 2006, well after the agreement expired, the PTO issued reissue patents to N-Data. The issue in this case is whether the agreement, which licenses National patents to Intel, automatically extends to any reissue patents that are derived from those licensed National patents. The CAFC held that the license agreement extends to the full scope of any coverage available by way of reissue for the invention disclosed.
Tags: assignment > continuation > licensing > reissue
Non-enabling disclosure by first inventor of low defect single crystal was sufficient to defeat under 102(g) patent claim of subsequent inventor
| December 12, 2012
The Fox Group, Inc. v. Cree, Inc.
November 28, 2012
Panel: Newman, O’Malley, and Wallach. Opinion by Wallach. Dissent by O’Malley.
Summary:
(1) Summary judgment in favor of defendant was affirmed with respect to asserted claims because (a) defendant was first to reduce to practice the claimed SiC single crystal, and (2) plaintiff did not produce sufficient evidence raising genuine issue of material fact to show that defendant suppressed or concealed the invention.
(2) Holding that unasserted claims were invalid was vacated.
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Tags: 102(g) > abandoned > abandoned suppressed or concealed > concealed > enabling disclosure; burden of proof > first-to-file > first-to-invent > prior inventor > reduction to practice > suppressed
Prior art can show what the claims would mean to those skilled in the art
| December 5, 2012
ArcelorMittal v. AK Steel Corp.
November 30, 2012
Panel: Dyk, Clevenger, and Wallach. Opinion by Dyk.
Summary:
The U.S. District Court for the District of Delaware held that defendants AK Steel did not infringe plaintiffs ArcelorMittal’s U.S. Patent No. 6,296,805 (the ‘805 patent), and that the asserted claims were invalid as anticipated and obvious based on a jury verdict.
ArcelorMittal appealed the district court’s decision. On appeal, the CAFC upheld the district court’s claim construction in part and reverse it in part. With regard to anticipation, the CAFC reversed the jury’s verdict of anticipation. With regard to obviousness, the CAFC held that a new trial is required because the district court’s claim construction error prevented the jury from properly considering ArcelorMittal’s evidence of commercial success.
미국 델라웨어주 연방지방법원 (U.S. District Court for the District of Delaware)은 원고 (ArcelorMittal)가 피고 (AK Steel)를 상대로 낸 특허 침해 소송에서 원고의 특허 (U.S. Patent No. 6,296,805)가 예견가능성 (anticipation) 및 자명성 (obviousness) 기준을 통과하지 못하였다는 배심원의 판단을 바탕으로 피고가 원고의 특허를 침해하지 않았다고 판결하였다.
이에 불복하여 원고는 연방항소법원 (U.S. Court of Appeals for the Federal Circuit)에서 상고 (appeal) 하였으며, 연방항소법원은 지방법원의 청구항 해석 (claim construction)에 대해 일정 부분은 확인하였으나, 나머지 부분은 번복하였다.
예견가능성과 관련하여 연방항소법원은 배심원의 예견가능성 판단과 다른 결정을 내렸다.
자명성과 관련해서는 연방지방법원의 잘못된 청구항 해석으로 인하여 배심원이 원고의 상업적 성공 (commercial success) 증거를 고려하지 않았기때문에 재심 (new trial)이 필요하다고 판결하였다.
Tags: anticipation > claims construction > commercial success > extrinsic evidence > intrinsic evidence > obviousness > prior art > secondary considerations
Method Claim Survives Over MPF Claim’s Demise Under Aristocrat
| November 28, 2012
ePlus, Inc. v. Lawson Software, Inc.
November 21, 2012
Dyk, Prost, O’Malley. Opinion by Prost.
Summary:
This case serves as a reminder of the importance of having different claim types. ePlus’ jury verdict of infringement of two systems claims was vacated because the Federal Circuit found one means-plus-function element recited therein to lack the requisite corresponding structure being disclosed in the specification, thereby rendering the claims indefinite under 35 USC §112, second paragraph. However, the infringement of a similar method claim reciting the same function as the means-plus-function element was affirmed.
Tags: §112 > §112 sixth paragraph > Aristocrat > claims drafting > indefiniteness > means > means-plus-function
Latest Developments in Calculating Patent Term Adjustment (PTA) from the District Courts
| November 21, 2012
Exelixis, Inc. v. Kappos
Decided November 1, 2012
U.S. District Court for the Eastern District of Virginia
University of Massachusetts v. Kappos
Decided November 9, 2012
U.S. District Court for the District of Colombia
Summary
This week, rather than discuss a CAFC case, we take a look at two important District Court cases dealing with Patent Term Adjustment (PTA). According to Exelixis, under 35 U.S.C. §154(b)(1)(B), the filing of a Request for Continued Examination (RCE) has no impact on PTA determinations when filed after the three year examination guarantee has passed. Additionally, according to University of Massachusetts, under 35 U.S.C. §154(b)(1)(A), a fundamentally flawed Office Action will count towards calculating an A delay.
Tags: patent term > Patent Term Adjustment > PTA > RCE > Request for Continued Examination
CAFC discusses interplay between means-plus-function and claim differentiation
| November 19, 2012
Icon Health & Fitness, Inc. v. Octane Fitness, LLC.
October 14, 2012
PROCEDURAL SUMMARY
ICON Health & Fitness, Inc. (“ICON”) owner of USP 6,019,710 (the “’710 patent”) sued Octane Fitness (“Octane”) for infringement in the United States District Court for the District of Minnesota. The District Court granted summary judgment of non-infringement of claims 1–5, 7, and 9–10 of the ’710 patent by concluding that the “stroke rail” and “means for connecting” limitations were absent in Octane’s Q45 and Q47 machines. On appeal, the CAFC agreed with the District Court’s claim construction and affirmed the District Court’s holding of non-infringement.
Tags: claim differentiation > means > means-plus-function > Tho