Major Patent Cases of 2008
Patent Eligible Subject Matter
The primary focus has been in the “mental steps” area, although early in the year the Federal Circuit refused to reconsider its 2007 decision that a disembodied signal did not qualify for patent protection as a “manufacture”.
In re Bilski (Fed. Cir.)
Something is patent-eligible if:
(1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different state or thing.
This case is reported in greater detail at https://ladasparry.wpengine.com/BULLETINS/2008/Inre_Bilski.shtml
In re Comiskey (Fed. Cir. 2009)
In 2007, it was held that a method for carrying out mandatory arbitration was not patentable subject matter unless carried out using a technical means since otherwise what was being claimed was an unpatentable mental process, which the Supreme Court had held unpatentable in Gottschalk v. Benson. In 2009, the Federal Circuit vacated this decision and remanded the case to the PTO to determine whether there was use of a specific machine in view of the decision in In re Bilski.
Ex Parte Bo Li (BPAI)
A claim to a computer program product comprising a computer usable medium having code embodied therein which was adapted to be executed to implement a method for generating a particular type of report was found to be patent-eligible as a product claim.
Note: a number of Board of Appeal decisions have made it clear that the product must be tangible and not a signal.
Prometheus Labs Inc. v. Mayo Collaborative Services (S.D. Cal)
Claim to a method of optimizing therapeutic efficacy for a treatment of an of an immune mediated gastrointestinal disorder by determining the level of 6-thioguanine in the subject and administering a drug providing 6-thioguanine in an amount correlated to the levels found by the determination.
Not patent eligible: this was discovery of a natural phenomenon and that the claim would wholly preempt use of the phenomenon.
Written Description
The idea that part of the written description requirement is to show that the applicant had possession of the invention at the time of filing continues to be an important element in Federal Circuit analysis. The court reasons that this is one way to make sure that a patent does not cover more that the inventor really invented.
Carnegie Mellon University v. Hoffmann-La Roche (Fed. Cir.)
Claims to broadly defined recombinant plasmids comprising gene coding for DNA polymmerase 1 insufficiently supported by description of DNA from a single bacterial species.
In re Alonso (Fed. Cir.)
The proper disclosure of a single monoclonal antibody has been found to be insufficient to support a claim to a method of treatment using any one of a genus of antibodies that were useful in that treatment at least in the absence of any description of a representative group of antigens to which the antibody must bind.
There was evidence showing that there was a substantial variety of antibodies that would meet the requirements of the claim.
PowerOasis Inc. v. T-Moble USA Inc. (Fed. Cir.)
The plaintiff argued for a broad interpretation of the term “customer interface” to cover remote units including those not forming part of a vending machine in order to catch an alleged infringer. The court held that there was no support for such an interpretation in early applications in a series of c-i-ps from which the patent derived. Consequently, the earliest application supporting the broad interpretation was more than one year after a public prior use of something falling within the scope of the broad interpretation. The claims were invalid.
Enablement
The importance of providing an enabling disclosure across the entire breadth of the claim continues to be a feature of Federal Circuit decisions, and not just in the field of biochemistry.
Stirick v. Dreamworks LLC (Fed. Cir.)
Lack of enablement across the breadth of the claim was found where the specification taught how to integrate a user’s audio signal or visual image into videogames but not how to do this for movies, both of which were found to fall within the term “preexisting audiovisual image source” used in the claims.
Novelty
Several cases have addressed the question of what a piece of prior art must contain or what form it must take to be relevant to determination of novelty of a later filed patent application. The relationship of the date of reduction to practice and experiments that were claimed to be non-anticipatory as being experimental use has been considered.
Net MoneyIn Inc. v. VeriSign Inc. (Fed. Cir.)
Not only must a piece of prior art that is relied upon as an anticipation have disclosed all of the features of the claim, they must be “arranged or combined in the same way as the claim”.
Impax Laboratories v. Aventis Pharmaceuticals Inc. (Fed. Cir.)
The “Wands factors” were applied in reaching a conclusion that a prior art document did not contain sufficient information for it to be enabling to act as an anticipation where there was no clear disclosure of use of the compound claimed nor guidance as to how to devise the correct dosage in an allegedly anticipating prior patent.
SRI International Inc. v. Internet Security Systems Inc (Fed. Cir.)
The placing of a paper on a file transfer protocol (FTP) server, which could be accessed by the public but which contained no indexing that would take one to the paper without guidance was insufficiently available to support a summary judgment of anticipation, even though one person outside the organization knew of the existence of the paper.
Kyocera Wireless Corp v. ITC (Fed. Cir.)
Disclosure must be in a single publication to destroy novelty. A compilation such as the “GSM Bible” for the GSM standard may not qualify as such a single document. There was no evidence that anyone had read the entire document and differet parts had different authors.
In re Cygnus Telecoms Tech LLC Patent Litigation (Fed. Cir.)
To be experimental, and so not an anticipating, prior use, the use must have taken place prior to the invention being reduced to practice. During prosecution the applicant had submitted a declaration stating a date of reduction to practice. Later, but more than one year before the filing date, there had been paid use of the invention. The plaintiffs argued 1) that it was unnecessary to establish a date of reduction to practice during prosecution and so such statements should be ignored and 2) that the paid use of the invention was only an early version of the invention and was not profitable. Both arguments failed and the court held the claims anticipated by virtue of the on sale bar.
In re Omeprazole Patent Litigation (Fed. Cir.)
Under the particular factual circumstance of the case that Phase III clinical trials were needed before reduction to practice was complete. Consequently, such trials were not anticipatory prior use. Evidence showed that there had been a reformulation of the product prior to Phase III trials and so testing was needed to see whether “real time stability” had been achieved.
Ex parte Yamaguchi (BPAI)
For the purposes of 35 USC 102(e), the date of filing of a US Patent publication being relied upon as a prior art reference is the date of filing of a provisional on which the published application is based.
Obviousness
The court continued to consider the ramifications of the Supreme Court’s 2007 decision in KSR v. Teleflex, particularly in the field of chemistry.
Eisai Co. Ltd. v. Dr Reddy’s Laboratories Ltd. (Fed. Cir.)
Although there may have been reasons to select the particular starting compound that was modified to produce the claimed compound (this was not decided), there was no reason to modify it in the manner that had been done. It was noted that “post-KSR a prima facie case of obviousness for chemical compounds still in general begins with the reasoned identification of a lead compound” that is modified in a particular way to achieve the claimed compound.
The compound that had been modified had particularly useful properties (lipophilicity) that would be destroyed by making the necessary modification. Hence there was no reason to make the modification required to produce the claimed compound.
Ortho-McNeil Pharmaceiutical Inc. v. Mylan Labs Inc (Fed. Cir.)
Non-obviousness found where the challenges faced by one skilled in the art were coupled with powerful unexpected results. The claimed compound was an anti-epilepsy drug. The compound was made by a series of steps starting from a known compound. The prior art presented one skilled in the art with a number of possible starting points and that even if the correct starting material had been chosen, one had a number of options to consider. Contrary to KSR, there were therefore not just a finite number of options to pursue such that it was obvious to try them.
Boston Scientific v. Cordis
Relying on KSR’s statement that “if a person of ordinary skill in the art can implement a predictable variation § 103 likely bars it’s patentability”, the court found it obvious to combine features of two different embodiments of a prior art disclosure that were shown in adjacent figures without there being any particular motivation to do so.
CSIRO v. Buffalo Tech.
Federal Circuit vacated a pre-KSR district court summary judgment of non-obviousness and remanded for further investigation of the facts in a case where similar techniques had been used in other fields and it might be obvious to apply them to the problem in hand, namely indoor wireless networks where problems were caused by echoes. The pre-KSR argument that the problems to be solved were different no longer applied.
Asyst Technologies Inc. v. Emtrak Inc.
Applied KSR’s statement “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill“ to find it obvious to use of a multiplexer to replace a bus in a tracking system used to track parts in a fabrication system.
Claim Language
The need for precision of claim language and that it corresponds well with the description continued to be emphasized.
Halliburton Energy Services Inc. v. M-I LLC (Fed. Cir.)
Even if a meaning can be given to a term, if that term is crucial to a determination of the boundary of a claim and it fails to serve that purpose, the claim may be invalid under the second paragraph of 35 USC 112. Thus the term “fragile gel” a term recognized as meaning a gel that easily transitions to a liquid on application of force, was held to be indefinite where the amount of force needed to effect the conversion was a key to distinguishing from the prior art.
Decisioning.com Inc. v. Federated Department Stores Inc
A broad term in a claim may be construed narrowly if this is what the specification indicates. “Remote interface” in a claim relating to an automatic account processing system was construed as excluding consumer-owned personal computers. The only embodiment described the interface as a kiosk and the claim originally required a kiosk but was amended during prosecution to replace “kiosk” by “remote interface”. This was not defined or used in the specification. The court construed the term “remote interface” as requiring public access.
Miken Corporation LLC v. Wilson Sporting Goods (Fed. Cir.)
The court insisted on giving the ordinary meaning to the word “insert” as applied to something in the core of a baseball bat and held that it had to be capable of insertion. Hence a bat which was built around the core member was not within the scope of the claim.
Helmsderfer v. Bobrick Washroom Equipment Inc.
The claim was to a wall-mounted station for changing diapers wherein the top surface of a platform was “partially hidden” from view when the station was in a closed position. In the preferred embodiment and all of the relevant drawings, the surface was completely hidden when the station was closed. Held: that the plain meaning of “partially” applied and so the claim excluded the preferred embodiment. There were other independent claims not in suit which did not use the word “partially” and that the embodiments described might fall within those claims.
Computer Docking Station Corp. v. Dell Inc (Fed. Cir.)
Language in the specification referring to the key board mouse and display screen as being “peripherals”, which term was agreed meant an external device capable of connecting to a computer, led to a claim to a “portable computer” being construed to exclude laptops where such features were built in. A feature of the claim was the presence of a single connector to connect all such peripherals to the microprocessor.
Johns Hopkins University v. Datascope Corp (Fed. Cir.)
A claim lacking the word “means” that was construed as containing a “means plus function” element. The term was “fragmentation member … that automatically extends to conform to the shape and diameter” of a synthetic vascular graft in a claim for a method of breaking up blood clots. Limiting the scope of the claim to what was described in the specification (a wire basket with at least three points of contact with the inner surface of the graft) the court held that use of an S-shaped wire did not infringe.
Aristocrat Technologies v. International Game Technology
In construing a means plus function claim under 35 USC 112 ¶ 6, reference in the specification to a general purpose microprocessor with “appropriate programming” was insufficient description of the structure required to support a claim limitation of “game control means” in the absence of disclosure of any algorithm for this purpose, even though the specification stated that creation of such means was within the capability of one skilled in the art.
Cohesive Technologies Inc. v. Waters Corp
The term “about 30 μm” applied to an average particle size included particles of a size of 25.434 μm but excluded those of a size of 23.044 μm. The court’s reasoning was that in referring to “about 50 μm” the specification had indicated that particles of a size of 42.39 μm ( a variation of 15.22%) could be used but the that specification had specifically stated that particles of a size “about 20 μm” were not acceptable.
Because the use of the word “about” had captured the same “range of novelty that typically justifies the application of the doctrine of equivalents” the doctrine of equivalents was not applicable to this claim limitation.
Inequitable Conduct
There was no let up from the high standards required in recent years in assessing when an intent to deceive can be inferred from the circumstances.
Pfizer Inc. v. Teva Pharmacueticals USA Inc.
A good faith analysis of the prior art in question which had not been disclosed to the PTO resulting in a determination that it was not material and so need not be disclosed was sufficient to defend against a charge of inequitable conduct. The court reasoned that the good faith analysis rebutted any inference of an intent to deceive.
Praxair Inc. v. ATMI Inc.
Lack of any explanation as to why a material document known to one of the inventors and to the attorney prosecuting the application had not been disclosed to the examiner has been found to justify an inference that there was a lack of good faith and consequently of inequitable conduct.
Scanner Technologies Corp. v. ICOS Vision Systems Corp.
Statements made in a petition to make an application special and so expedite prosecution can constitute inequitable conduct.
Aventis Pharma S.A. v. Amphastar Pharmaceuticals Inc.
Inequitable conduct found where a declaration used to overcome a rejection based on inherency in the prior art failed to disclose that the concentrations used to determine the half life of prior art composition and the claimed composition were different. An intention to deceive was inferred from the failure to make this clear throughout a long prosecution during which the declarant had made more than one declaration.
Monsanto Co. v. Bayer Biosciences
Failure to disclose an employees notes of someone else’s poster where the attorney prosecuting the application had discussed the notes with the employee and concluded that they were ‘”undecipherable standing alone” and the employee was “unable to remember anything” was sufficient to result in a finding of inequitable conduct and hence unenforceability.
Infringement
Decisions as to the acts constituting infringement, the test for infringement of a design patent and application of the doctrine of equivalents.
Litecubes LLC v. Northern Light Products Inc.
Notwithstanding that the sales of the products in question were f.o.b a location in Canada there was a sale within the United States for the purposes of determining patent infringement when “American customers were in the United States when they contracted for the accused cubes and the products were delivered directly to the United States”.
This case is reported in greater detail at https://ladasparry.wpengine.com/BULLETINS/2008/Light_Cubes_vs_Northern_Lights.shtml
Muniauction Inc.v. Thomson Corporation
No infringement in a case where the defendant conducted auctions over an electronic network using a browser. One step required by the claim was input of a bid by a bidder and hence was not performed by the “auctioneer”. In reaching its conclusion, the court stated:
The control or direction standard is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method.
PSN Illinois LLC v. Ivoclar Vivadent Inc.
Claim was for a method of fabricating a custom-made porcelain veneer restoration for a tooth in which the final step was “eroding away [a mold piece] from said porcelain veneer restoration leaving said restoration ready for mounting on said tooth”. The defendants method left sprue on the veneer after the erosion step. As the sprue had to be removed, the restoration was not “ready for mounting”. Therefore the defendants method was not an equivalent because it lacked a limitation “ready for mounting” required by the claim.
TIP Systems LLC v. Phillips & Brooks/Gladwin Inc
The claim was for a telephone for permanent mounting in environments where the telephone is subject to abuse it required “a telephone hand set” being “a handle with an earpiece at one end and a moth piece at an opposite end”. The handpiece of the alleged infringement lacked a handle. The specification showed only embodiments with a handle and in argument during prosecution in a related case, the applicants had argued that the related case was distinguished by absence of a “standard telephone handset”. The lack of a handle in the alleged infringement therefore resulted in a finding of non-infringement under the doctrine of equivalents.
Egyptian Goddess v. Swisa
The only test for infringement of a design patent is whether the ordinary observer giving such attention as a purchaser usually gives, would view the alleged infringing design as being substantially the same as the patented design. There is no separate need to compare the novel features of the patented design with features of the alleged infringement, although “[w]here there are many examples of similar prior art designs, … differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.”
Induced Infringement
Broadcom Corporation v. Qualcomm Incorporated
In 2007 in Seagate it was held that that counsel’s opinion was not a factor in determining whether there was objective recklessness sufficient to find willful infringement. However, counsel’s opinion remains relevant to the issue of intent to induce infringement.
Induced infringement may be shown … by showing the defendant 1) “intended to cause the acts that constitute the direct infringement” and 2) knew or should have known that its action would cause the direct infringement. Opinion-of-counsel is relevant to the second factor. “It would be manifestly unfair to allow [such] evidence to serve an exculpatory function … And yet not permit patentees to identify failures to procure such advice as evidence of intent to infringe.”
Patent Exhaustion
Quanta Computer Inc. v. LG Electronics Inc. (Supreme Court)
This cases is reported in greater detail at https://ladasparry.wpengine.com/BULLETINS/2008/Quanta_Computer_Inc_vs_L_G_Electronics.shtml
The doctrine of patent right exhaustion can apply to method claims and to claims for combinations in which the component sold by or with the consent of the patentee is incorporated if the item sold “embodied” the patents in question.
Despite extensive briefing on the question of whether sellers should be able to protect themselves from the doctrine of patent exhaustion by placing conditions on their sales, the Supreme Court declined to address the issue, simply finding that on the facts of the case (which were unusual and involved several agreements) the original sale of the microprocessors was unconditional.
Injunctions
The implications of the Supreme Court’s decision in E-Bay v MercExchange continue to be explored with a rule of thumb developing that injunctions are only to be granted in cases between direct competitors. However, this may not be the final word as the Federal Circuit sees more appeals.
Innogenetics N.V. v. Abbott Laboratories
The Federal Circuit vacated the grant of a permanent injunction in a case where the assessment of damages had included what the Federal Circuit concluded was an entrance fee in addition to a reasonable percentage royalty. In such a case, the court reasoned, the patent owner cannot properly argue that it would be irreparably harmed by future sales and the proper recourse was for the district court “to delineate the terms of the compulsory license, such as conditioning the sales of the infringing production payment of the running royalty.”
Voda v. Cordis Corporation
The Federal Circuit held that notwithstanding the Supreme Court’s language in e-Bay that some patent holders such as university researchers or self made inventors might be able satisfy the traditional four factor test for grant of a permanent injunction, this did not change the basic rule that the plaintiff must show that it would suffer irreparable harm if the infringement continued. In this case, while the exclusive licensee might suffer such harm, the exclusive licensee was not a plaintiff. Hence no permanent injunction should be granted.
Broadcom Corporation v. Qualcomm Incorporated
The Federal Circuit upheld the grant of a permanent injunction with a twenty month phase out provision for the infringing product granted in order to account for the hardship on the defendant and others and possible public interest factors if an immediate injunction had been granted to prevent sale or use of certain chips used in 3G telecommunication equipment. On the facts of the case, it found the fact that the patent owner had licensed its technology to Verizon did not show that it had failed to show that it would suffer irreparable harm or that money damages would suffice.
Acumed LLC v. Stryker Corporation
The Federal Circuit held the district court had not abused its discretion in issuing a permanent injunction notwithstanding the facts that the defendants product was a medical device and that the patent owner had granted licenses under its patent. The defendant was a direct competitor with the patent owner and that although the grant of licenses was a factor to be considered, it did not preclude findings of irreparable harm and that money damages would be insufficient to compensate for infringement by an additional competitor. On the question of the balance of hardships, only the plaintiff and defendant’s hardships are relevant. The expense incurred by the defendant also was not a relevant factor. On the public interest issue, non-infringing alternatives were available.
Monsanto Co. v. Parr
A preliminary injunction against inducing infringement was appropriate against a seed cleaner who cleaned seeds for replanting, the seeds in question, Roundup Ready soybeans, being patent infringements because:
the very nature of this case compels injunctive relief. Without injunctive relief, Monsanto would be in the position of having to repeatedly investigate and file lawsuits against Parr and his customers after discovering a new crop of Roundup Ready soybeans.
Jurisdiction and Venue
Campbell Pet Co. v. Miale
Although simply writing a letter alleging infringement to someone in a state was insufficient to establish personal jurisdiction, attempts to have a competitors products removed from a trade show in the state and statements to the competitor’s customers in the state that the products in question were infringing were sufficient extra-judicial attempts at patent enforcement to make the patent owner subject to personal jurisdiction in the state.
In re Tech USA Corporation
Federal Circuit Court of Appeals ordered (by mandamus) transfer of a case from the Eastern District of Texas to the Southern District of Ohio. Applying the law of the Fifth Circuit, the Federal Circuit found that Ohio was more convenient for all witnesses, none of the parties was incorporated in Texas or had offices in Texas and the only connection with Texas was that some allegedly infringing items had been sold there, but such items were on sale throughout the United States and had no more connection with Texas than any other state.
Micron Technology Inc. v. MOSAID Technologies Inc.
Following Medimmune “potential defendants will have greater opportunity to race to the courthouse to seek a forum more convenient and amenable to their legal interests. By the same token, patent holders will similarly race to protect their convenience and other perceived advantages. Therefore, the district court judge faced with reaching a jurisdictional decision about a declaratory judgment action with an impending infringement action either filed or on the near horizon should not make a decision … based on any categorical rules. The first-filed rule, for instance, will not always yield the most convenient and suitable forum.
The court must consider the convenience and suitability of competing forums.
Prasco LLC v. Medicis Pharmaceutical Corporation
Even under the Supreme Court’s Medimmune decision, it is still necessary that the controversy was “of sufficient immediacy and reality” for the court to issue a declaratory judgment. This can occur when there was a reasonable apprehension of suit, but also in cases where there were demands for royalty payments or creation of barriers to regulatory approval of a product where this is necessary for marketing or possibly other types of “extrajudicial patent enforcement”. However, in the case before it, such immediacy and reality did not exist. The acts alleged were marking of its product with a patent number, suits by the patent owner against others and a unanswered request for a covenant not to sue.
USPTO Procedural issues
In re Swanson
In considering whether a new issue of patentability has been raised so as to permit re-examination to proceed, what is meant is “new to the patent office. Different standards pertain to burdens of proof in re-examination and court proceedings so that just because a court had not found that one who was alleging invalidity of a claim had adduced clear and convincing evidence of this did not preclude the PTO from finding invalidity in re-examination proceedings where the patent owner faced a higher burden.
Aristocrat Technologies v. International Game Technology
The district court had held that revival of an abandoned application caused by failure to pay the national phase entry fee within thirty months of the claimed priority for a PCT application entering the U.S. national phase or failure to respond to a official action within the six month statutory time was possible only if the abandonment was “unavoidable” and that the PTO rules permitting revival for “unintentional” abandonment under these circumstances were ultra vires. On appeal, the Federal Circuit decided that improper revival of an abandoned application was not a ground of patent invalidity, but declined to decide whether PTO rules were proper.
Wyeth v. Dudas (D. DC)
The Patent Term Guarantee Act provides two bases for calculation of patent term extension to compensate for delays in prosecution caused by the PTO: 1) 14-4-4-4 rule and 2) any overall delay extending total pendency to beyond three years from the actual date of the application. If the two methods of calculation overlap, the days of the overlap shall only be counted once. Contrary to the practice of the PTO up to this point, only delays under the 14-4-4-4 rule occurring after three years of pendency had already expires would be treated as overlap and so discounted. (The court reasoned that there could only be “overlap” if the same calendar day was counted twice).
Tafas v. Dudas (E.D. Va)
Permanent injunction granted to prevent PTO from bringing new rules on continuations and numbers of claims into effect on the basis that the rules proposed were substantive rather than procedural in nature and so exceeded the PTO’s rule-making authority.
The case is on appeal to the Federal Circuit. It is also discussed in greater detail at: https://ladasparry.wpengine.com/BULLETINS/2008/USPTO_rule_changes_voided_by_court.shtml
Settlements and Antitrust
In re Ciprofloxacin Hydrochloride Antitrust Litigation
No antitrust violation was found in settlement of a patent infringement action in which the patent owner agreed that it would either act as a supplier of drug to the alleged infringer or make payment to that party in return for the alleged infringer amending its ANDA, to delay any unauthorized sales until the patent expired. The court reasoned that the patent was presumptively valid (indeed it had been upheld in re-examination and the patent owner had been successful in suits against others) and so nothing was being agreed to that did not fall within the terms of the patent grant. Decisions in other circuits where such “reverse payment” agreements had been found to be antitrust violations were distinguished on the basis that other anticompetitive acts were involved.
Rights In Inventions
The need to take proper care that one does not give away rights inadvertently was emphasized.
DDB Technologies LLC v. MLB Advanced Media LP
Although state law governs the interpretation of contracts generally, the question of whether a patent assignment clause creates an automatic assignment or merely an obligation to assign is [one we treat as a matter of federal law]. … [W]hether an assignment of patent rights in an agreement … is automatic requiring no further act on the part of the assignee, or merely a promise to assign depends on the contractual language. If the contract expressly grants rights in future inventions no further act is required once an invention comes into being and the transfer of title occurs by operation of law. Contracts that merely obligate the inventor to grant rights in the future … may vest the promisee with equitable rights to those inventions,but do not by themselves vest legal title to patents on the inventions in the promisee.
Lucent Technologies Inc. v. Gateway Inc.
If some subject matter of a patent is invented within the terms of a collaboration agreement but some is invented by only one party, while other subject matter is the fruit of the collaboration, in the absence of agreement to the contrary, the entire patent will be jointly owned, even though the subject matter of some of the claims could have formed the subject matter of a separate patent to which one party was entitled to exclusive ownership.
Double Patenting
The use of the one-way test in which the court simply looks to see whether the claims of the second application filed are obvious over the claims of the first as the almost invariable test to use was reaffirmed. Only in cases where the PTO had caused delays in patenting of the first application filed should one also look to see whether the claims of the first application filed were also obvious over those of the second application.
Pfizer Inc. v. Teva Pharmacueticals USA (Fed. Cir.)
35 USC 121 precludes the raising of a double patenting rejection based on a parent application against a divisional application as long as the divisional only contains claims that were the subject matter of a restriction requirement in the parent case. However, this “safe harbor” does not extend to continuation-in-part applications that build upon claims that were subject to an original restriction requirement.
In re Basell Poliolefine Italia S.P.A
There was no reason to apply the two way test when the claims in question were filed after the claims over which they were rejected in a series of continuation applications, both claims having been present in copending applications giving the applicant the opportunity to deal with the issue at that time.
Miscellaneous
EBRE Elektromedizin GmbH v. Canady (W.D. Penn)
The unsuccessful plaintiff in an action for patent infringement in the English courts argued that the Patent Act preempted a requirement to pay attorney fees ordered by the English court payment of which was sought under the Pennsylvania Uniform Foreign Money Judgments Recognition Act. The Court disagreed: the plaintiff had chosen to sue in England and so had to abide by English rules, even if attorney fees would not have been payable in similar circumstances in U.S.A.
Pequignot v. Sola Cup Co. (ED Va)
Failure to remove patent number indications after a patent had expired and markings that the product “may be covered by one or more U.S. or foreign pending or issued patents” could be an offense under 35 USC 292 if done for the purpose of deceiving the public. The court reasoned that the statute created a potential offense by any marking that “imported that the product was patented and that the wordings in question were likely to suggest to the public that the product was patented. This was enough. The public was entitled to rely on marking as an indication of the status of the intellectual property in the product.
Kyocera Wireless Corp v. ITC
Unless the statutory requirements for a general exclusion order have been met, these provisions do not give the ITC the power to order exclusion of products made by persons who were not parties to the proceedings before the ITC, even though they may be down-stream users of products of the type about which the proceedings were brought and had obtained the products from parties to the ITC proceedings. General orders may be issued only if:
(A) a general exclusion from entry of articles is necessary to prevent circumvention of an exclusion order limited to products of named persons; or
(B) there is a pattern of violation of this section and it is difficult to identify the source of infringing products.
Feel Free to direct any questions you may have to:
Presenter: John Richards
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