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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
In a dispute over a patent licensing agreement, CAFC refuses to deny enforcement of an arbitration clause based on a technicality
Ryan Chirnomas | March 29, 2012
Promega Corporation et al. v. Life Technologies Corporation et al.
March 28, 2012
Panel: Newman, Dyk. Opinion by Dyk. Dissent by Moore.
Summary
Despite an oversight relating to transfer of a patent licensing agreement during a licensee’s merger proceedings, the Federal Circuit held that the licensee retained its right to demand arbitration in a dispute with a sub-licensee. Although the licensee ultimately did not suffer any negative legal consequences due to this oversight, this case provides a good reminder to corporate IP counsel to carefully review all tech transfer agreements during mergers or reorganizations. Here, a single letter to the sub-licensee could have saved the licensee from significant distraction.
Interpretation of statutory two-year time limit for enlarging the scope of claim in a continuing reissue application filed after the two-year window
Yoshiya Nakamura | March 14, 2012
In re Erik P. Staats and Robin D. Lash
March 5, 2012
Panel: Dyk, O’Malley and Reyna. Opinion by Dyk. Concurrence by O’Malley.
Summary:
In 1999, a patent was issued to Staats (assigned to Apple Computer) based on an application for his invention regarding isochronous data transfer in a computer. The patent discloses two embodiments. Staats then filed a first reissue application within two years from the issue date of the patent, broadening the scope of claims related to a first embodiment. Outside the two-year window, he further filed other broadening reissue applications as continuations. In 2007, almost seven years after the original patent issued, the last broadening reissue application was filed, which is related to a second embodiment. The PTO’s board held that the last continuing reissue application was not filed within the two-year window because it was not related to the first embodiment which was timely presented within the two-year window. The CAFC reversed and remanded this case, affirming their precedent case which holds that the statutory two-year limit applies to only the filing date of a reissue application, not to the date that broadened claims are presented.
出願人は、コンピュータのデータトランスファーに関する発明を出願し、特許を取得した。その後、クレーム範囲を広げる再発行特許出願を行った。特許出願の明細書には、発明の2つの態様が開示されていた。最初の再発行特許は第1の態様に関するものであり、審査の結果、再発行特許として発行された。その第1の再発行特許が許可される前に出願人は、継続出願として、第2の再発行出願を行い、さらに第2の再発行出願が許可される前に、第3の再発行出願を行った。この第3の再発行出願には、最初の出願もしくは第1の再発行出願でクレームされていた第1の態様とは異なる第2の態様がクレームされていた。特許庁は、第3の再発行出願は最初の再発行出願とは関係のない発明のクレーム範囲を拡大しようとするものであるから、クレーム範囲の拡大は最初の特許発行日から2年以内にのみ可能であるという米国特許法251条の規定に違反するとして拒絶し、審判部もその拒絶を維持した。CAFCは、審判部の判断は誤りであり、クレームを拡大するための最初の再発行出願が2年以内に行われていたか否かが問題であり、その後の継続再発行出願のクレーム内容が最初の再発行出願のクレーム内容と関係があるか否かは問題ではないと判断した。
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Tags: Apple > Apple Computer > broadening reissue > reissue > two-year window > YoshiyaNakamura
KSR Reigned In For A Preliminary Injunction
John Kong | 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 > johnkong > KSR > obvious to try > obviousness > preliminary injunction > teaching away
Under unusual circumstances, CAFC re-affirms that conception does not require understanding how or why an invention works
Ryan Chirnomas | 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
Michael Caridi | 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.
Quick comparison between US and JP prior art qualification
Tsuyoshi Nakamura | December 8, 2011
“International Harmonization” may be a key word in 2011 in IP industry. As with the patent reform act passed by Congress in September, JP counterpart was updated in June. Thanks to efforts and big challenges done by two countries, basic requirements for patentability, especially prior art qualification, would be similar between these two countries from March 16, 2013 (effective date of the patent reform act in U.S.). However, several differences still exist and we cannot ignore them:
1. 102(a)(2) prior art can be qualified as prior art for obviousness (JP: only anticipation).
2. Applicants can rely on a public disclosure date to antedate 102(a)(2) prior art (JP: No!).
3. Applicants may have one-year grace period (before first filing) after the first disclosure (JP: must file JP application within 6 months).
4. Once Applicants publicly disclosed the subject matter, later disclosure by an independent inventor may not bar the patentability (JP: may be qualified prior art).
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CAFC rejects BPAI’s “thrust of rejection” argument
Thomas Brown | 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.