NAI torpedoes own patent with faulty §120 priority
Michael Caridi | October 9, 2018
Natural Alternatives v. Iancu
October 1, 2018
Before Prost, Moore and Reyna. Opinion by Prost.
Summary:
Natural Alternatives International (“NAI”) asserted USP 8,067,381 (“the ‘381 patent” against Woodbolt Distributers, LLC (“Woodbolt”). The ‘381 patent asserted priority back to a parent, USP 5,965,596 (“the ‘596 patent”) filed in 1997. Woodbolt filed a request for inter partes reexamination asserting that the §120 priority chain was broken by an intermediate patents assertion of priority only to a provisional application filed in 2003. The Examiner and Patent Board agreed and rejected the claims of the ‘381 patent in view of the ‘596 patent as prior art. NAI appealed the Board’s decision. The CAFC affirmed the Examiner and Board on the basis of faulty §120 priority.
Parker Vision on Functional Claim Limitations
WHDA Blogging Team | September 28, 2018
ParkerVision, Inc. v. Qualcomm Incorporated
September 13, 2018
Before O’Malley, Reyna and Taranto. Precedential Opinion by O’Malley, joined by Reyna and Taranto.
Summary:
Qualcomm filed three inter partes review proceedings challenging the validity of claims of ParkerVision’s U.S. Patent No. 6,091,940 (the ‘940 patent) based on obviousness. ParkerVision appealed the PTAB’s decision holding apparatus claims of the ‘940 patent as being obvious, and Qualcomm cross-appealed the PTAB’s decision holding method claims of the ‘940 patent as being not obvious. On the one hand, the CAFC affirmed that the apparatus claims were invalid, denying ParkerVision’s argument that Qualcomm had not identified conditions in which the prior art device would operate to perform a function of generating “a plurality of harmonics” within the apparatus claim, explaining that only the capability to perform the function is required for an apparatus claim. On the other hand, the CAFC affirmed that the method claims were not invalid, denying Qualcomm’s cross-appeal for failing to provide any argument or evidence as to why a person of ordinary skill would have selected operating conditions that would cause the prior art to perform the function of creating “a plurality of harmonics” as claimed.
Whose Burden Is It?
WHDA Blogging Team | September 19, 2018
DuPont, Archer Daniels v. Synvina
September 17, 2018
Before Lourie, O’Malley and Chen. Opinion by Lourie, joined by O’Malley and Chen.
Summary:
DuPont and ADM filed an inter partes review petition against Synvina’s ‘921 patent that claims a method for making 2,5-furan dicarboxylic acid (FDCA), which is useful as bio-mass. The Board ultimately held that DuPont had failed to prove that the ‘921 patent was obvious over the prior art. On appeal, the CAFC reversed, finding that the Board had incorrectly failed to shift the burden of production, from DuPont to the patentee Synvina and had misapplied the standard for finding whether variables are result-effective.
The public use bar may not be triggered even if the invention is tested publicly prior to the critical date
Sung-Hoon Kim | September 14, 2018
Polara Engineering Inc. v. Campbell Company
July 10, 2018
Before Lourie, Dyk, and Hughes. Opinion by Lourie.
Summary:
The Federal Circuit affirmed the jury’s finding of experimental use that negates application of the public use bar by Polara because Polara’s activities were necessary to ensure that the invention would work for its intended purpose and Polara’s invention was “a life safety device” that the testing was “imperative.” The Federal Circuit found that while it is undisputed that Polara did not enter a confidentiality agreement, Polara maintained the secrecy of the invention. Finally, the Federal Circuit found that Polara was not commercially exploiting its invention during the test periods.
Tags: §102 > confidentiality agreement > critical date > experimental use > filing date > public use
