CAFC Reminds the Patent Office to Play Fair When Issuing New Grounds of Rejection and Evaluating Objective Evidence of Non-Obviousness
| October 3, 2013
Rambus Inc. v. Rea
September 24, 2013
Panel of Moore, Linn, and O’Malley, Opinion by Moore
Summary
The Court of Appeals for the Federal Circuit in Rambus Inc. v. Rea reminds Examiners and the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) that procedural checks remain in place for issuing new grounds of rejection. Examiners and the Board cannot bury a new ground of rejection in a decision, without ensuring that a patent applicant has had a fair opportunity to respond to the rejection. Indeed, whether the applicant has had a fair opportunity to react to the thrust of the rejection is reiterated as the ultimate determination of whether a rejection is considered “new”.
In line with the Federal Circuit’s recent decision in Leo Pharmaceutical Products v. Rea, Rambus is also a reminder that objective evidence of non-obviousness must be given due consideration and weight. Examiners and the Board cannot undercut an applicant’s objective evidence of non-obviousness through an overly stringent interpretation of the nexus and “commensurate in scope” requirements.
Tags: obviousness > procedural issues > reexamination > secondary considerations
Inventorship disputes raise difficult issues; involvement of State universities adds layers of complexity
| September 6, 2013
University of Utah v. Max-Planck-Gesellschaft
August 19, 2013
Panel: Moore, Reyna and Wallach. Opinion by Reyna. Dissent by Moore.
Summary:
This case started with the University of Utah suing the University of Massachussetts and others to obtain correction of inventorship in a group of patents co-owned by UMass and the other defendants. But the main issues in this appeal relate to the status of the plaintiff UUtah and initial co-defendant UMass as State entities.
To overcome UMass’ sovereign immunity defense (a State can be sued by another State only in the Supreme Court under Article III of the Constitution), UUtah amended its complaint to name individual UMass officials, instead of UMass itself.
The District Court held that the lawsuit could proceed, and the Federal Circuit affirms on the grounds that (1) UMass is not a “real party of interest” because deciding inventorship does not involve a core state interest, and (2) UMass is not an “indispensable party” because the officials can adequately represent the interest of UMass as co-owner of the patents.
Tags: indispensable party > inventorship correction > sovereign immunity
If Alleged Infringer Doesn’t Cross-Appeal Validity of Narrowly Interpreted Claim, He May Not Challenge Validity of Later Broadly Construed Claim
| May 8, 2013
Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc.,
April 19, 2013
Panel: Lourie, Dyk and Reyna. Opinion by Lourie. Dissent by Dyk.
Summary
Based on narrow claim construction, the district court issued a prior judgment that patent claims were valid but not infringed either literally or under the doctrine of equivalents. Lazare Kaplan (Patentee) appealed the judgment of non-infringement. But Photoscribe (Alleged Infringer) did not cross-appeal the judgment of validity. On appeal, CAFC broadly interpreted the claims and vacated the judgments of no infringement. The issue of infringement was remanded to the district court.
On remand, Photoscribe moved for summary judgment of invalidity based on the CAFC’s broad claim construction, and moved for relief from the district court’s prior judgment of validity under Rule 60(b). The district court granted both of Photoscribe’s motions. Lazare Kaplan appealed. CAFC reversed both district court decisions holding that the district court abused its discretion by granting relief under Rule 60(b).
地裁は、先の判決で、クレームを狭く解釈し、特許クレームは有効だが、侵害はないと判決した。特許権者Lazare Kaplan社は非侵害判決を不服として控訴したが、被疑侵害者Photoscribe社は、特許有効の判決に関して控訴しなかった。控訴審でCAFCはクレームを広く解釈し、非侵害判決を破棄し、地裁に差戻した。
差戻審で、Photoscribe社は、CAFCの解釈に基づいて特許クレームの無効を主張し、一方、特許有効の確定判決に関し、それに拘束されない連邦民事訴訟規則60(b)に基づく救済を求めた。地裁はPhotoscribe社の両方の申立てを認めた。CAFCは地裁が規則60(b)に基づく救済を認めたことは裁量権を逸脱するとし、また、特許クレーム無効判決を破棄した。
Tags: appeal > cross-appeal > rule 60(b)
CAFC clarifies the presumption that prior art is enabled after In re Antor Media Corp (Fed. Cir. 2012)
| April 10, 2013
In re Steve Morsa
April 5, 2013
Panel: Rader, Lourie and O’Malley. Opinion by O’Malley.
Summary
The Board of Patent Appeals and Interferences (“Board”) had affirmed an Examiner’s finding that a short press release, relied on for an anticipation rejection, was enabling. In making its decision, the Board had held that arguments alone by the applicant were insufficient to rebut the presumption that a reference was enabling. The CAFC found that the Board and the examiner had failed to engage in a proper enablement analysis of the reference and vacated the anticipation finding.
Tags: affidavit > declaration > declaration and affidavit > enablement > evidence to overcome presumption of enablement > non-enabling prior art > presumption of enablement
Board Should Consider Appellee’s Grounds For Affirming Rejection Presented To Examiner During Reexamination, Even If Grounds Had Not Been Raised On Appeal
| February 6, 2013
Rexnord Industries v. Kappos
January 23, 2013
Panel: Newman, Lourie, Prost. Opinion by Newman.
Summary:
In 2003 Habasit filed an infringement suit against Rexnord in the United States District Court for the District of Delaware for infringement of its U.S. Patent No. 6,523,680 (the ’680 patent). Rexnord then requested inter partes reexamination of the ’680 patent, and the district court stayed the infringement suit pending completion of reexamination.
On reexamination, the examiner held all of the claims in the ’680 patent unpatentable for anticipation and obviousness. Habasit appealed the examiner’s decision to the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board). On appeal, the Board reversed the examiner’s decision and held the claims patentable.
Rexnord appealed to the CAFC. The CAFC affirmed that the claims are not anticipated, and reversed the Board’s determination that the claimed invention is not obvious in view of certain prior art.
Tags: anticipation > appeal > obviousness > reexamination
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
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
Apple is bit at CAFC: The Court reversed and remanded a preliminary injunction obtained at the District Court against Samsung’s Galaxy Nexus Smartphone
| October 17, 2012
Apple Inc. v. Samsung Electronics, Ltd. et al.
Decided: October 11, 2012
Panel: Prost, Moore, and Reyna. Opinion by Prost.
Summary
The CAFC reversed the District Court’s finding that there was irreparable harm to Apple by allowing sales of the Galaxy Nexus. The CAFC held that there was an insufficient causal nexus between the claimed invention and the sales of the product. The Court also addressed Apple’s likelihood of success to interject claim construction.
Tags: claim construction > galaxy nexus > injunction > irreparable harm > likelihood of success > nexus > preliminary injunction > smartphone
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
