Articles Posted in Federal Circuit

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Plaintiff filed a patent infringement action against the defendant alleging that certain of defendant’s T-shirt transfer products infringed plaintiff’s patent. Defendant filed an answer and counterclaim which accused the plaintiff of inequitable conduct in amending its patent during a reissuance of the patent. Defendant claimed that plaintiff deliberately pursued a broadened reissue patent based on her learning of material faults in the patent after having had an opportunity to analyze defendant’s products and technology. Defendant’s primary contention was that the amendments made during the reissuance proceeding added new material to the patent.

As the district court wrote, “[a] reissue patent that enlarges the scope of the claims contained in an original patent shall not be granted unless it is applied for within two years of the grant of the original patent.” The reissue application for the patent-in-suit was filed more than two years after the issuance of the patent. Plaintiff moved to dismiss the inequitable conduct defense on the grounds that the facts alleged did not support a plausible inference that the plaintiff (1) made an affirmative misrepresentation of material fact or failed to disclose material information to the PTO during the reissue examination and (2) intended to deceive the PTO.
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Mean-plus-function limitations in patent claims require special construction and can result in narrow patent claims that may not be beneficial to patent owners. As a result, many potential infringers will try to take advantage by claiming that certain terms in patent claims are in reality means-plus-function claims. The determination of whether certain terms in a patent are means-plus-function claims can have an important impact on the validity of the patent.

The Federal Circuit’s recent decision in a case involving patents pertaining to elevator systems highlights the importance of whether a claim limitation is considered a means-plus-function term. In Inventio AG v. Thyssenkrupp Elevator Americas Corp., Case No. 2010-1525 (Fed. Cir. June 15, 2011), this distinction played a key role.
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After the Federal Circuit’s decision in Thereasense, Inc. v. Becton, Dickinson and Co., 2011 WL 2028255 (Fed. Cir. 2011), it appeared likely that it would be difficult, if not impossible, to proceed on an inequitable conduct claim. A recent decision from the United States District Court for the District of New Jersey may change that trend.

Schering Corp. (“Schering”) filed a complaint alleging that Mylan Pharmaceuticals’ (“Mylan”) Abbreviated New Drug Application (“ANDA”) infringed two of Schering’s patents that disclosed different ways to reduce cholesterol levels. Schering filed motions for partial summary judgment, one of which sought to eliminate Mylan’s defense of inequitable conduct in light of Thereasense. After granting Schering’s motion for summary judgment on the issue of infringement, the district court examined the motion addressing the inequitable conduct defense.
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The Federal Circuit’s en banc decision in Therasense v. Becton, Dickinson & Co., is having its intended effect of reigning in inequitable conduct claims. In a recent decision, Judge Otero of the United States District Court for the Central District of California granted summary judgment of no unenforceability on defendant’s inequitable conduct claim. Plaintiff U.S. Rubber Recycling, Inc. filed suit alleging, among other things, that Defendant Ecore International, Inc. fraudulently procured and wrongfully enforced its patent relating to rubber acoustical underlayment (insulating material for use with floor tile) in order to monopolize the market for such products. Specifically, the Plaintiff asserted that, “during the prosecution of the [patent], Defendant intentionally failed to disclose to the PTO material prior art that showed the claimed invention had been sold in the United States and described in printed publications more than one year prior to the [patent] application.” In its summary judgment motion, the Defendant alleges “that the issuance of the reissue patent demonstrates that the alleged prior art are not material as a matter of law” and that the “Plaintiff cannot raise an issue of genuine fact that the Defendant failed to disclose any reference with bad intent.”
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Failing to act and follow up on cease and desist letters against potential infringers of a patent may preclude enforcement of the patent. This is particularly true when the patent owner does not begin litigation or execute a license for the patent and, during the intervening time, the potential infringer takes action to build its business in reliance on the patent owners failure to act. These issues were addressed by the Federal Circuit in a recent decision, Aspex Eyewear Inc v. Clariti Eyewear, Inc., 605 F.3d 1305 (Fed. Cir. 2010).

For further details, see a discussion of Aspex.

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In a recent case from the United States District Court for the District of Delaware, the district court held that the defendant was not liable for patent infringement based on the doctrine of divided infringement. The district court based its ruling on the Federal Circuit’s decision in Centillion Data Sys., LLC v. Qwest Communications Int’l, Inc., 631 F.3d 1279 (Fed. Cir. 2011).

In Centillion, the Federal Circuit analyzed a patent that disclosed a system for collecting, processing, and delivering information from a service provider, such as a telephone company, to a customer. The Federal Circuit focused its decision on the word “use” — agreeing that “direct infringement by ‘use’ of a system claim ‘requires a party … to use each and every … element of a claimed [system.]” Id. at 1285. The Federal Circuit also stated that “to use’ a system for the purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.”
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To have a valid patent, an inventor must disclose sufficient detail in the specification to enable the patent, often referred to as the enablement requirement. To fulfill the enablement requirement, an inventor must disclose enough detail in the patent to teach a person of ordinary skill in the art to make the invention without undue experimentation. But an inventor cannot rely on the argument that one of ordinary skill in the art can fill in missing details from the specification. Indeed, recent case law demonstrates that inventors cannot rely on the person of ordinary skill in the art to serve as a substitute for missing information in the specification of the patent.

The case of Alza Corp v. Andrx Pharamaceuticals LLC, 603 F.3d 935 (Fed Cir. 2010), addressed this exact issue. For more information, please see a discussion of Alza.

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In pursuing patents for their inventions, inventors need to make sure that earlier filed provisional patent applications filed by other inventors do not preclude the inventor’s patent application. The Federal Circuit’s decision in In re Giacomini, (Fed. Cir. July 7, 2010) affirmed a USPTO Board of Patent Appeal’s decision that found the patent examiner properly rejected certain claims of a pending application. The decision in Giacomini occurred because an earlier filed provisional application by another inventor disclosed the same invention. Because the inventor failed to challenge the written description of the earlier filed provisional application, the inventor waived his right to do so on appeal and lost his patent as a result.

The Federal Circuit began by noting that “an applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application. Here, the inventor did not dispute that the earlier provisional application described the invention claimed in Giacomini’s application. As result, the Federal Circuit found that the provisional, which pre-dated Giacomini’s filing date, was the first U.S. application to describe the invention.
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The written description requirement is of heightened importance in determining the priority date for continuation patent applications. Without a sufficient written description that supports and details the claims of the patent, the priority date of the parent patent may be lost for the continuation application. This issue was recently addressed by the Federal Circuit in the Anascape, LTD. v. Nintendo of America, Inc., 601 F.3d 1333 (Fed. Cir. 2010) decision and the decision is useful to review to understand the consequences of failing to have sufficient support in the written description for claims in a continuation patent.

Click here for a more detailed discussion: Anascape, LTD. v. Nintendo of America, Inc.

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It is well settled law that all inventors who contribute to an invention must be named on the patent application. Nonetheless, where there are many inventors who contribute to the conceptions and reduction to practice of an invention, it can be difficult to determine who should be listed as the inventors on the patent application. But taking the time to do this right is also critical. Because the failure to name all co-inventors can render the patent unenforceable, particularly if one or more of the named inventors intended to deceive the patent office, it is very important to thoroughly analyze who should be named on the patent application. In addition, listing people who are not inventors as inventors can have the same dire consequences–the inability to enforce the patent. The recent case of Advanced Magnetic Closures, Inc. v. Rome Fasteners Corp., 607 F.3d 817 (Fed. Cir. 2010) illustrates what can happen when an inventor misleads the patent office on the issue of who invented the invention covered by the patent.

Click here for a more detailed discussion of Advanced Magnetic Closures, Inc. v. Rome Fasteners Corp.

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