Joint Inventorship of a novel compound may exist even if co-inventor only developed method of making
| January 25, 2012
Falana v. Kent State University and Alexander J. Seed
January 23, 2012
Panel: Linn, Prost and Reyna. Opinion by Linn.
Summary
The CAFC held that a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound. One may be a joint inventor even if co-inventor’s contribution to conception is merely a method of making the claimed product and said co-inventor does not synthesize the claimed compound.
Tags: claim construction > damages > exceptional case > inventorship > joint inventorship
KSR Reigned In For A Preliminary Injunction
| January 18, 2012
Celsis in Vitro, Inc. v Cellzdirect, Inc. and Invitrogen Corp.
January 9, 2012
Panel: Rader, Gajarsa, and Prost. Opinion by Rader; Dissent by Gajarsa.
Summary:
While Rader’s majority opinion affirmed the district court’s grant of a preliminary injunction despite defendant’s obviousness challenge, Gajarsa’s dissenting opinion asserts that the majority’s decision disregards the Supreme Court’s KSR flexible guidelines regarding the finding of obviousness in the mere repetition of well-known techniques to achieve a desired result, and in the application of “obvious to try.” Gajarsa’s dissent also notes that this is a preliminary injunction, and the standard is not whether defendant has shown obviousness by clear and convincing evidence, but rather, whether defendant has shown a “substantial question of invalidity” to defeat a preliminary injunction. Perhaps, the strongest position for the majority opinion is its consideration of the showing of a “teaching away” in the record, as well as deference given to the district court’s determinations of credibility of the parties’ expert witnesses.
Tags: common sense > injunction > KSR > obvious to try > obviousness > preliminary injunction > teaching away
More on Typhoon: Knowledge in the Art as a Factor in Determining Sufficiency of Corresponding Algorithm
| January 4, 2012
Since the CAFC was relatively quiet last week due to the holidays, this week we revisit Typhoon, which we discussed in our post last week. In the second half of this case, the CAFC continued their review of the district court’s claim interpretation. The CAFC reviewed the MPF claim term “means for cross-referencing responses to said inquiries with possible responses from one of said libraries.” The CAFC chose to emphasize a 1985 case, Shatterproof Glass, in indicating that the amount of detail required in the specification is related to the existing knowledge in the field of endeavor.
Means-Plus-Function Claims – “Algorithm” can be expressed in any understandable terms including in prose
| December 28, 2011
Typhoon Touch Technologies, Inc. v. Dell, Inc. et al.
CAFC, November 4, 2011
Panel: Rader, Newman, Prost. Opinion by Newman
Summary
The United States District Court for the Eastern District of Texas held the patents in suit invalid and not infringed. On appeal, the CAFC affirmed the district court’s rulings concerning the claim terms “memory for storing,” “processor for executing,” “operating in conjunction,” and “keyboardless.” However, CAFC reversed the district court’s ruling that the claim term “means for cross-referencing” is indefinite for failing to satisfy the requirements of 35 U.S.C. Section 112 ¶ 2. CAFC disagreed with the district court and held that the term “means for cross-referencing” is supported by the “structure, materials, or acts” in the specification.
地裁は、MPFのクレームにおいて、機能に対応する構造が明細書に記載されていないと判示し、特許法第112条2項に基づき、クレーム用語は不明瞭であり、クレームは無効であると判断した。CAFCは地裁に同意せず、本件では、明細書に十分な構造の開示があったと判示した。まず、コンピューターにより実施するために必要な構造（アルゴリズム（algorithm））が明細書に開示されているか否かを判断するにあたって、アルゴリズムは、数式、文章、フローチャート等、当業者が理解できるのであれば、どのような方法で開示されていても良いと示した。CAFCは、本件において必要なアルゴリズムは、文章により明細書に十分に開示されていたため、MPFの記載は不明瞭でないと判示した。
Under unusual circumstances, CAFC re-affirms that conception does not require understanding how or why an invention works
| December 21, 2011
Teva Pharmaceutical Industries v. AstraZeneca Pharmaceuticals and IPR Pharmaceuticals
CAFC, December 1, 2011
Panel: Rader, Linn and Dyk. Opinion by Linn.
Summary
The CAFC has re-affirmed that in order to establish conception of one’s invention, it is only necessary for the inventor to appreciate what the invention is, not how or why the invention works. In this case, it was only required that the inventor understand the contents of a drug formulation, and it was not necessary to understand the stabilizing function of one compound of the formulation. This principle is relatively non-controversial, but is presented in the context of the unusual strategy of conceding infringement even though the accused product did not meet one claim limitation, in order to attack the patent on §102(g) grounds.
CAFC Decision Reaffirms In Re Swanson while Dissent Raises Constitutional Questions Over Res Judicata and Issue Preclusion
| December 14, 2011
In Re Construction Equipment Company, U.S. Court of Appeals for the Federal Circuit 2010-1507
Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences.
(Reexamination No. 90/008,477)
Decided: December 8, 2011
__________________________
Summary
Court gives a brief precedential decision affirming a finding of obviousness for a much fought over patent. The decision is more a re-affirming of In re Swanson given the long litigation history of the patent-at-issue than a decision on legal merits of the BPAI’s finding of obviousness. The lengthy dissent of Judge Newman is highly critical of allowing a re-examination of a patent that had been hotly litigated for years in the judicial branch with an opposite outcome.
CAFC rejects BPAI’s “thrust of rejection” argument
| December 1, 2011
IN RE STEPAN COMPANY
(Reexamination Nos. 90/006,824 and 90/007,619)
(CAFC, October 5, 2011)
(Precedential)
Before DYK, FRIEDMAN, and PROST, Circuit Judges. PROST, Circuit Judge.
Summary
Patentee appeals the Examiner’s final rejection on reexamination. On appeal, the BPAI affirms the Examiner’s obviousness rejection for essentially the same reasons, but treats the primary reference as prior art under §102(a) in contrast to the Examiner’s reliance on the primary reference as prior art under §102(b) in the Examiner’s answer. However, the BPAI does not issue a new ground of rejection, since the thrust of the rejection was the same as the Examiner’s rejection. The Patentee appeals to the CAFC asserting the need for a full and fair opportunity to litigate the BPAI’s actual basis of rejection. The CAFC rejects the BPAI’s thrust of the rejection argument, vacates the BPAI’s decision and remands with instructions to designate its rejection as a new ground of rejection.
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