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Supreme Court Sides with Inventors in Kappos v. Hyatt
Darrin Auito | May 16, 2012
David J. Kappos v. Gilbert P. Hyatt
April 18, 2012
Affirmed 9-0 (CAFC en banc 7-2 decision). Opinion by Justice Thomas. Concurring opinion by Justice Sotomayor joined by Justice Breyer.
Summary:
The Hyatt decision is a victory for patent applicants. Any patent applicant dissatisfied with a decision of the Board of Patent Appeals and Interferences (or Patent Trial and Appeal Board after enactment of the AIA) may file a civil action against the Director of the PTO in federal district court and introduce new evidence beyond what was submitted to the PTO. The new evidence is subject to de novo review.
Tags: appeal > DarrinAuito > de novo > evidence > procedural issues > standard of review > Supreme Court
Means-Plus-Function: The Achilles’ Heel
Thomas Brown | 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
Michael Caridi | 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 > MikeCaridi > Trademark > utility patent
Odds and Ends
WHDA Blogging Team | April 27, 2012
A few brief points that have slipped through the cracks over the past few weeks:
- After the Mayo v. Prometheus Supreme Court decision, the USPTO issued a memo offering preliminary guidance to Examiners on how to incorporate the Supreme Court’s decision into their examination process. Click here to read it. The memo does not provide much guidance to the Examining Corps, other than some vague points to keep in mind in addition to previously issued guidance in view of the Bilski decision. On a related point, for our discussion of the Mayo case, click here for English and click here for Japanese.
- The Supreme Court remanded AMP v. USPTO back to the CAFC for reconsideration in view of their Mayo decision. See page 2 of the order.
- Our Stephen Parker provides further comments on the CAFC’s recent Bard decision at Medical Devices Summit (free registration required). Read his original article on that case here.
- Our friends at Think IP Strategy have assembled an e-book: 2011 Think Tank IP Almanac. Click here for more information.