Means-Plus-Function: The Achilles’ Heel
| May 9, 2012
Noah Systems, Inc. v. Intuit, Inc.
April 9, 2012
Panel: Rader, O’Malley and Reyna. Opinion by Judge O’Malley
Summary
This decision illustrates that a patent could become invalidated even after surviving challenges of reexamination, which strengthen the presumption of validity, when a challenger discovers the Achilles’ Heel of a means-plus-function claim element resulting in a summary judgment of invalidity by the CAFC. Noah appeals the granting, by the United States District Court for the Western District of Pennsylvania (DC), of Intuit’s Motion for Summary Judgment of Invalidity of USP 5,875,435 (the ‘435 patent) based on indefiniteness for a means-plus-function claim element without the DC hearing evidence of how one of skill in the art would view the specification. The CAFC affirms by finding that the specification discloses no algorithm when the specification discloses an algorithm that only accomplishes one of two identifiable functions performed by the means-plus-function limitation.
Tags: accounting > algorithm > expert testimony > financial > indefiniteness > invalidity > means-plus-function > software > summary judgment > ThomasBrown
BD Stumbles on the Fine Functionality Line between Patents and Trademarks
| May 2, 2012
In Re Becton, Dickinson and Company
April 12, 2012
Panel: Bryson, Clevenger, and Linn. Opinion by Clevenger. Dissent by Linn.
Summary
BD appealed a decision of the USPTO’s Trademark Trial and Appeal Board (TTAB) that a requested trademark registration for a design of a closure cap for blood collection tubes could 
not be trademarked because the design is functional. The CAFC affirmed the TTAB ruling relying heavily on prior BD utility patents and advertisements as evidencing functionality. Attempting to convert functional aspects into a trademark due to acquired secondary meaning will not hold. A company looking to protect a product across multiple forms of intellectual property needs to clearly identify, from the advent of seeking protection, which aspects are considered functional and which are for design purposes. The designation of function and design should be maintained in all ways the product is protected and promoted.
Tags: design > design patents > Trademark > utility patent
Every Patent Practitioner’s Nightmare – Prosecution Mistakes That Can’t Be Fixed
| April 25, 2012
Landmark Screens, LLC, v. Morgan Lewis & Bockius, LLP, and Thomas D. Kohler
April 23, 2012
Panel: Bryson, Clevenger and O’Malley. Opinion by Clevenger. Concurring opinion by O’Malley.
Summary:
Patent prosecution can be forgiving when a mistake is made. However, given the right set of circumstances, a simple mistake can turn into a nightmare for both the client and attorney. This decision illustrates that a given set of circumstances can lead to a mistake which cannot be fully corrected, which leads to charges of malpractice and fraud against the prosecuting attorney as well as loss of a client. This decision also illustrates that full claim scope can be lost as a result of the mistake.
Tags: continuation > divisional > fraud > malpractice > mistake > restriction requirement
Revisiting Therasense, CAFC finds that an inventor’s subjective belief that submission of documents was unnecessary may not be sufficient to avoid a showing of intent to deceive
| April 18, 2012
Therasense判決に基づくCAFC判決；書類のIDS提出は必要ではないとする発明者の主観だけでは欺瞞の意図の立証を避けるのには十分ではないかもしれない。
Aventis Pharma S.A. and Sanofi-Aventis U.S. LLC v. Hospira Inc. and Apotex Inc.
April 9, 2012
Panel: Linn, Dyk, and Prost; Opinion by Prost
Summary:
The court found that the patents were invalid over withheld references, and unenforceable for inequitable conduct.
If the patentee did not narrow the ordinary meaning of a claim term by either acting as its own lexicographer or disclaiming claim scope either in the specification or during prosecution, that claim term cannot be interpreted more narrowly than its ordinary meaning.
If the claims at issue are found invalid over a withheld reference under the clear and convincing evidence standard, then the withheld reference is found but-for material under the preponderance of evidence in Therasense; in this case, the materiality requirement was met since the patents were invalid based on the withheld references.
The witness’ explanation that that he believed he did not need to disclose the references to the PTO may not be sufficient to show that there was no specific intent to deceive the PTO because that finding was not the single most reasonable inference that could be drawn, unless the testimony is credible and the evidence presented is supported. The reference disclosing the information that shaped the inventive thinking should be cited, and there is no justification for telling the PTO about the prior art disclosing the problem an inventor examined while concealing key prior art disclosing the solution he chose.
Tags: claim construction > inequitable conduct > intent to deceive > materiality
Another per se rule bites the dust. A reference that discloses a range encompassing a somewhat narrower claimed range may not be sufficient to establish a prima facie case of obviousness
| April 12, 2012
Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.
August 23, 2011
Panel: Lourie, Plager and Dyk. Opinion by Lourie. Concurrence-in-part and dissent-in part by Dyk.
Summary:
This article concludes a three-part series regarding this important case from last year. For part 1, click here. For part 2, click here. This final article discusses the following questions:
Question 1: Does a broad range necessarily render obvious a narrower range falling within that broader range?
Answer 1: No.
Question 2: Do all minor chemical differences always lead to a conclusion of obviousness?
Answer 2: No.
CAFC holds all the claims of a patent have the same expiration date, whether the claims are drawn to the product subject to patent term extension or not
| April 11, 2012
Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.
August 23, 2011
Panel: Lourie, Plager and Dyk. Opinion by Judge Lourie. Concurrence-in-part and dissent-in part by Dyk.
Summary:
Today, we bring you the second in a series of three articles regarding an important case from last year. For part 1, click here. This article discusses the following question:
Question: Where a patent has been granted an extension of term due to regulatory review, is there a different expiration date for the claims that were the subject to the regulatory review and the claims that do not claim the approved product?
Answer: The expiration date is not determined on a claim by claim basis.
A patent, and therefore all of the claims in the patent, have the same expiration date, which is the expiration date as extended by patent term extension.
Tags: Delay due to regulatory review > Expiration > FDA > patent term > Patent Term Extension > PTE
Unexpected results, not disclosed in the specification, of a compound may overcome a prima facie case of obviousness
| April 2, 2012
Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.
August 23, 2011
Panel: Lourie, Plager and Dyk. Opinion by Lourie. Concurrence-in-part and dissent-in part by Dyk.
Summary:
Today, we bring you the first in a series of three articles regarding an important case from last year. This article discusses the following question:
Question: Can evidence of unexpected results of a compound be used to overcome a prima facie case of obviousness, where the unexpected result is not disclosed in the specification as originally filed?
Answer: Yes.
Evidence of unexpected results to a property of a compound, where the unexpected result is not disclosed in the specification as originally filed, can be used to overcome a prima facie case of obviousness.
Tags: comparative results > interference > obviousness > secondary considerations > unexpected data
In a dispute over a patent licensing agreement, CAFC refuses to deny enforcement of an arbitration clause based on a technicality
| March 29, 2012
Promega Corporation et al. v. Life Technologies Corporation et al.
March 28, 2012
Panel: Newman, Dyk. Opinion by Dyk. Dissent by Moore.
Summary
Despite an oversight relating to transfer of a patent licensing agreement during a licensee’s merger proceedings, the Federal Circuit held that the licensee retained its right to demand arbitration in a dispute with a sub-licensee. Although the licensee ultimately did not suffer any negative legal consequences due to this oversight, this case provides a good reminder to corporate IP counsel to carefully review all tech transfer agreements during mergers or reorganizations. Here, a single letter to the sub-licensee could have saved the licensee from significant distraction.
MAYO v. PROMETHEUS 米国最高裁判決
| March 23, 2012
No. 10–1150. Argued December 7, 2011—Decided March 20, 2012
For an English discussion of Mayo v. Prometheus, please click here.
背景
Prometheus Laboratories（以下、Prometheus）は、自己免疫疾患を治療するためのチオプリン（thiopurine）ドラッグに関する2つの特許（U.S. Patent No. 6,355,623、No.6,680,302）の独占的使用権を有する。特許クレームは、チオプリンが投与された患者の血中の代謝物量を測定し、それに合わて投与量を調整する方法に関するものである。
Tags: §101 > bilski > biotech > diagnostics > law of nature > patent eligible subject matter > Supreme Court
The threshold to acquiring intervening rights by reexamination requires new or amended claim language
| March 21, 2012
Marine Polymer Technologies, Inc. v Hemcon, Inc. (en banc)
March 15, 2012
Panel: Rader, Newman, Lourie, Bryson, Gajarsa, Linn, Dyk, Prost, Reyna and Wallach (en banc)
Opinion for the court by Lourie. Rader, Newman, Bryson and Prost join in full and Linn joins in part II (Intervening Rights)
Opinion for the dissent by Dyk. Gajarsa, Reyna, and Wallach join in full and Linn joins in parts I-II (Claim construction, dismissing HemCon motion for JMOL and/or new trial)
Summary:
Based on statutory interpretation of 35 U.S.C. §307(b), the Majority held that the threshold requirement for acquiring intervening rights is that there must be amended or new claims that did not exist in the original patent but have been found to be patentable during reexamination. The CAFC held that amended means to make formal changes to the actual language of a claim. A claim is not amended merely because the scope of the claim has been altered by arguments presented during reexamination.
Tags: claim construction > damages > en banc > intervening rights > re-examination > reexamination
