Patent Infringement Litigation as a Double-Edged Sword: Invalidated Patents and Inequitable Conduct
| December 6, 2013
The Ohio Willow Wood Company (OWW) v. ALPS South LLC. (Alps)
Decided November 15, 2013
Before Dyk (Circuit Judge), Bryson (Circuit Judge) and Reyna (Circuit Judge). Opinion by Reyna.
Keywords: collateral estoppel, obviousness, inequitable conduct, reexamination, and rule of reason.
Summary:
OWW initiated a suit against Alps for patent infringement. After a long legal battle including two ex parte reexaminations, two District Court proceedings, and two CAFC appeals, OWW lost two patents and was charged with inequitable conduct.
Details:
OWW is the owner of US Patent No. 5,830,237 (the ‘237 patent), entitled “Gel and Cushioning Devices,” filed on March 5, 1996. The ‘237 patent disclosed cushioning devices designed to cover the residual stumps of amputated limbs, acting as a shape-conforming buffer, as illustrated below, to make the use of attached prostheses more comfortable. The primary invention was a cushion liner comprising a fabric covering in the shape of a tube sock coated on only one side with mineral oil-based polymeric gels.
On December 27, 2004, OWW filed its complaint against Alps for infringement of the ‘237 patent. After the District Court issued its Claim Construction order in the proceedings, Alps filed its first request for an ex parte reexamination of the ‘237 patent. The District Court stayed the litigation for the duration of reexamination proceedings, pending resolution of the validity of the disputed patent.
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Tags: Collateral Estoppel > inequitable conduct > obviousness > reexamination > Rule of Reason
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
Amending to exclude a species via a negative limitation may violate the written description requirement
| August 7, 2013
In re Bimeda Research & Development Limited
July 25, 2013
Panel: Rader, Clevenger, Prost. Opinion by Clevenger. Concurrence by Rader.
Summary:
The court held a negative limitation to exclude a genus does not provide 112, first paragraph written description support to claim a negative limitation that excludes a species, which species was never mentioned in the application.
Tags: genus > negative limitation > species > written description
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
CAFC does not find means-plus-function in a “height adjustment mechanism”
| November 7, 2012
Flo Heathcare Solutions v. Kappos
October 23, 2012
Panel: Newman, Plager, and Wallach. Opinion by Wallach.
PROCEDURAL SUMMARY
The patentee sued the defendant for infringement. The defendant then requested inter partes reexamination of the patent. The trial judge stayed the infringement action, pending completion of the reexamination. The patent reexamination examiner and the Patent Office Board rejected the claims as being anticipated by the prior art. On appeal, the CAFC disagreed with the PTO Board’s claim construction; but even under the CAFC’s claim construction, it found that the claims were anticipated and therefore affirmed the PTO’s rejection of the claims
Tags: claim construction > means > means-plus-function > reexamination
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
If at first you don’t succeed ….
| May 18, 2012
In Re Baxter International, Inc.
(Reexamination No. 90/007,751)
May 17, 2012
Panel: Newman, Lourie, Moore. Opinion by Lourie. Dissent by Newman
Summary
The CAFC’s decision in In re Baxter Int’l, Inc. (Fed. Cir. 2012) highlights the distinction between a reexamination and a district court proceeding. Specifically, the CAFC affirmed the Board of Patent Appeal and Interferences (“Board”) determination in a reexamination proceeding that claims 26-31 of U.S. Patent No. 5,247,434 (“the ‘434 patent”) are invalid – despite having previously held in a parallel litigation proceeding that the same claims were not invalid – because the courts and the USPTO use different standards to address validity. However, the CAFC cautioned that had the claims been found to be invalid in the litigation proceeding after all appeals had been exhausted, then the PTO “ideally should not arrive at a different conclusion” during a parallel reexamination proceeding when presented with the same arguments.
Tags: BPAI > parallel litigation > reexamination > standard of proof > standard of review
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
Will the Marine Polymer Expansion of Intervening Rights be Reversed?
| January 30, 2012
A few days ago the CAFC issued a notice that it would review, en banc, last September’s 2-1 panel decision in Marine Polymer v. HemCon, specifically the holding that absolute intervening rights arise where a patentee narrowly construes its claims in reexamination, thereby “effectively amending” those claims, even without an actual amendment of the claims. See 35 U.S.C. §§ 252 and 307(b). Such intervening rights, of course, eliminate all damages for the period before the issuance of the reexamination certificate concluding the reexamination. Until Marine Polymer, only a single trial had found intervening rights derived from argument alone.
There was, however, a dissent by Judge Alan Lourie who did not accept the “amendment in effect” argument. For him, there is “threshold requirement in §§ 307(b) and 316(b) that intervening rights apply only to amended or new claims.” Since that threshold requirement was not satisfied, there could be no intervening rights, Judge Lourie argued.
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.
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