Like prior art patents, potentially anticipatory non-patent printed publications are presumed to be enabling
| October 5, 2012
In re Antor Media Corporation
July 27, 2012
Panel: Rader, Lourie and Bryson. Opinion by Lourie.
Summary
Antor Media Corp. appeals from the decision of the Board of Patent Appeals and Interferences rejecting on reexamination the claims of its patent as anticipated and obvious over four prior art references. The prior art references include three printed publications and one U.S. patent. The Board found that two of the printed publications anticipated the claims in Antor’s patent. Here, Antor argues that since the printed publications are not enabling, they could not have anticipated the claims. Antor further argues that unlike prior art patents, prior art printed publications are not presumptively enabling. The principal issue on appeal is therefore whether the presumption that prior art patents are enabling can be logically extended to printed publications. The Federal Circuit answers that it can, holding that a prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.
Tags: anticipation > enablement > non-enablement > non-patent literature > prior art
Belkin v. Kappos: PTO’s Determination of the threshold issue in Reexamination is not appealable
| October 3, 2012
Belkin International, Inc. et al. v. David Kappos, Director, USPTO, et al.
Decided: October 2, 2012
Panel: Rader, Lourie and Wallach. Opinion by Lourie.
Summary:
This decision results from a pre-AIA appeal in an inter partes reexamination proceeding. The issue in this appeal is whether a prior determination that an argument based on a given reference does not raise a substantial new question of patentability (“SNQ”) as to a claim when such an SNQ was raised with respect to certain other prior art is appealable. The CAFC held that this determination is not appealable and that the proper course of action is to timely petition the Director to review the determination.
Tags: reexamination > SNQ > substantial new question of patentability
Burden of persuasion in the post-MedImmune world
| September 27, 2012
Medtronic v. Boston Scientific Corporation, Guidant Corporation and Mirowski Family Ventures
September 18, 2012
Panel: Lourie, Linn, Prost. Opinion by Linn.
Summary
This decision discusses who carries the burden of persuasion in the post-MedImmune world. This question arises as a consequence of the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). In MedImmune, the Supreme Court found declaratory judgment jurisdiction even though the declaratory judgment plaintiff-licensee continued to make royalty payments pursuant to a license. The Court reasoned that a licensee should not be forced to cease royalty payments and risk infringement liability before the licensee can challenge the extent of coverage of the license.
The district court entered judgment of non-infringement in favor of Medtronic and judgment of validity and enforceability in favor of Mirowski Family Ventures (MFV). MFV appeals the judgment of non-infringement and Medtronic cross appeals the district court’s claim construction. The CAFC vacates the district court ruling and remands.
Tags: burden of persuasion > claim construction > Declaratory judgment > license
Summary Judgment improperly granted in trade secret misappropriation case
| September 7, 2012
Raytheon Company v. Indigo Systems Corp. and FLIR Systems, Inc.
August 1, 2012
Panel: Linn, Dyk and O’Malley. Opinion by Linn.
Summary
Raytheon sues Indigo for misappropriation of trade secrets in selling an infrared imaging camera to a general contractor on the F-35 Joint Strike Fighter program. The district court grants Indigo’s motion for summary judgment that the statute of limitations (3 years) had lapsed. Former employees of Raytheon started up Indigo to produce infrared imaging cameras. The district court impermissibly drew inferences against the non-moving party (Raytheon) in granting the summary judgment motion. Further, the summary judgment motion should not have been granted because Texas and California law state that the discovery rule for the statute of limitations is a question of fact and not of law.
Tags: statute of limitations > trade secret > trade secret misappropriation
Federal Circuit Judges Spar over Post-FDA-Approval Application of Hatch-Waxman Safe Harbor
| September 4, 2012
Momenta Pharma v. Amphastar Pharma
August 3, 2012
Panel: Rader, Dyk and Moore. Opinion by Moore.
Summary:
Momenta sued Amphastar for infringement of Momenta’s drug testing method. Amphastar argued that its use of Momenta’s patented method for testing Amphastar’s commercial batches is covered by the exception to infringement for activities related to FDA regulatory review under the “safe harbor” provision of section 271(e)(1). The District Court issued a preliminary injunction against Amphastar, holding that the “safe harbor” is limited to pre-FDA approval activities. The Federal Circuit vacates the injunction. Amphastar’s activities took place after FDA marketing approval of Amphastar’s product, but the plain language of the statutory “safe harbor” covers all uses of a patented invention that are “reasonably related” to submission of information under FDA regulatory review. Since Amphastar’s manufacturing batch testing was mandated by FDA for commercialization, and not “routine” information gathered “voluntarily,” Amphastar’s use of Momenta’s patented method is exempted by the “safe harbor.”
Tags: 271(e) > FDA > FDA regulatory review > hatch-waxman > infringement > safe harbor
Prosecution Argument Bars Later Recapture Through Broadening Reissue
| August 29, 2012
Greenliant Systems, Inc. v. Xicor LLC
August 22, 2012
Panel: Linn, Plager and Dyk. Opinion by Dyk
Summary:
Xicor obtained a patent claiming a semiconductor device with a tunneling layer formed by low pressure chemical vapor (CVD) deposition using tetraethylorthosilicate (TEOS). Xicor sought and obtained reissue of the patent with device claims that did not recite the use of TEOS. Subsequently, Greenliant sued Xicor for declaratory judgment of invalidity of the reissue claims based on recapture rule, which prohibits recapture via reissue of subject matter surrendered in order to overcome prior art during prosecution of the original patent. The District Court held the reissue claims invalid, and the Federal Circuit affirms. Xicor had repeatedly argued during prosecution of the original patent that the product-by-process limitation of using TEOS imparted structural limitations to the final product. This is sufficient for the recapture rule to apply, even if Xicor now recognizes that the structure of the tunneling layer does not actually depend on the material used for the CVD process, but on deposition conditions such as temperature and pressure.
Tags: broadening reissue > estoppel > prosecution argument > prosecution history estoppel > recapture > reissue > Reissue Claim
Can an open-ended claim range be enabled?
| August 22, 2012
Magsil Corp. and MIT v. Hitachi Global
August 14, 2012
Panel: Rader, O’Malley, Reyna. Opinion by Rader.
Summary
The U.S. District Court for the District of Delaware granted summary judgment finding claims 1-5, 23, 26 and 28 of appellants’ U.S. Patent No. 5,629,922 (the ‘922 patent) invalid as a matter of law for lack of enablement and therefore non-infringed. At issue was whether the specification enabled the broad scope of the claimed “open-ended” range of values having a lower threshold, but no upper limit, defined by “a change in the resistance by at least 10% at room temperature”.
Magsil appealed the district court’s decision. On appeal, the CAFC affirmed the district court’s finding that claims 1-5, 23, 26 and 28 of the ‘922 patent are invalid for lack of enablement.
Tags: criticality of ranges > enablement > open-ended claim range > ranges
Fractured CAFC panel again affirms patent eligibility of isolated DNA, and applies Mayo
| August 21, 2012
Association for Molecular Pathology et al. v. U.S.P.T.O. et al.
August 16, 2012
Panel: Lourie, Bryson and Moore. Majority opinion by Lourie, concurrence by Moore, dissent by Bryson.
Less than a month after hearing oral arguments, the CAFC panel of Judges Lourie, Bryson and Moore last week issued an updated decision in the controversial AMP v. USPTO (Myriad genetics) case. The CAFC reached the same conclusion as they did last year: (1) the Plaintiffs do have standing, (2) the isolated DNA and cDNA claims are patent eligible, (3) the “analyzing” and “comparing” method claims are not patent eligible and (4) the screening method claim is patent eligible.
As with the decision last year, the panel reached a unanimous conclusion with respect to the issues of standing, subject matter eligibility of the cDNA claims, and subject matter eligibility of the method claims. However, the panel reached different conclusions with respect to the composition claims which recite isolated DNA. Since the opinions of the Court are very similar to the opinions issued in 2011, this article will focus on the Judges’ views with respect to the impact of Mayo v. Prometheus (English summary; Japanese summary) on the claims in question, and particularly with respect to the isolated DNA claims.
Tags: §101 > bilski > biotech > cDNA > DNA > law of nature > Myriad > patent eligible subject matter > Supreme Court
Using Trademark in Categories Other than the One as Filed May Result in Abandonment
| August 15, 2012
LENS.COM, INC. v. 1-800 CONTACTS, INC.
August 3, 2012
Panel: Newman, Linn and Moore. Opinion by Linn.
Summary
Lens.com, Inc. (“Lens.com”) appeals a decision of the Trademark Trial and Appeal Board (“Board”) granting a motion for summary judgment by 1-800 Contacts, Inc. (“1-800 Contacts”) and ordering the cancellation of Lens.com’s registration for the mark LENS due to nonuse. The mark was filed to be used in connection with computer software, but the business of Lens.com is in the field of retail sales of contact lenses. The issue at dispute is whether software incidentally distributed in connection with retail business in the context of an internet service constitutes a “good in commerce.” The court applies a three-prong test established in non-internet-related case law to the current case in finding nonuse of the mark, and distinguishes the current case from an Eleventh Circuit decision.
Lens.com公司就商标裁决上诉委员会批准关于注销 LENS 商标登记的动议提出上诉。 该动议由1-800 Contacts公司提出，称lens.com已停止使用该商标。该商标注册为“计算机软件相关业务”的商标，而Lens.com仅在隐形眼镜零售领域开展业务。该案中的争议问题是互联网零售业务中偶尔附带发送的软件是否构成“商品”。法院利用了建立在非互联网相关案件的判例法上的“三因素测试”认定该商标已停止使用， 并且将本案与第十一巡回法庭判决的一个互联网相关案件加以对比区分。
Tags: abandonment > cancellation > Trademark > use in trade
A Federal Circuit Lesson on the Structuring of Employment Agreements to Ensure That a Company Owns Its Employees’ Inventions
| July 25, 2012
Preston v. Marathon Oil Company and Thomas Smith
July 10, 2012
Panel: Bryson, Dyk and O’Malley. Opinion by O’Malley.
Summary
In this case, an employee, Yale Preston (“Preston”), executed an employment agreement about one month after starting to work as an employee for Marathon Oil Company (“Marathon”). Whether or not the execution of an agreement after starting employment requires further consideration beyond “continued employment” varies based on state law. Here, the Federal Circuit held that no further consideration was required under Wyoming state law and that the employer, Marathon, owned the invention at issue by virtue of the employment agreement. The Federal Circuit further held that Preston did not breach the employment agreement by failing to later sign a subsequent assignment because the employment agreement included the language “does hereby assign” in relation to future inventions, whereby the invention at issue was assigned to Marathon by the employment agreement regardless of whether the invention was after the execution of the employment agreement.
Tags: assignment > contract > employee > employment contract > ownership
