In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness.  The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness:  the jury held a dependent claim obvious but the independent claim from which it depends not obvious.  The court stated that such a result reflects an "irreconcilable inconsistency" and thus a new trial on obviousness must be granted.

The court also addressed the question of incorporation by reference.  The defendant argued the claims were anticipated based on a prior art patent that made reference to another patent for one of the relevant limitations.  The district court held the incorporation by reference was ineffective and excluded expert testimony regarding the "combined" prior art.  The Federal Circuit reversed, holding the incorporation by reference was sufficiently specific to be successful, and remanded the issue of anticipation to the district court for redetermination.

More on Callaway Golf Co. v. Acushnet Co. after the jump.

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In a decision Tuesday, the Federal Circuit held the USPTO had not provided sufficient evidence that an inventor's manuscript was publicly accessible, and therefore available as prior art under § 102(b), before the critical date of the application.  As a result, the court reversed the Board of Patent Appeals and Interferences.

At issue was the inventor's own manuscript.  It was undisputed that the manuscript disclosed the invention and was filed with the U.S. Copyright Office more than a year before the filing date of the application.  The Board held this, combined with the ability to search the Copyright Office records by title, provided sufficient evidence of public accessibility to qualify the manuscript as prior art under § 102(b). 

The Federal Circuit reversed.  After surveying the applicable case law, the court held the copyright office automated catalog was insufficient to render the manuscript publicly accessible because it only permitted searching by the author's last name or the first word of the title of the work.  Further, while the copyright office records were spearately indexed by two commercial search providers that permitted keyword searching, there was no evidence in the record of when these commercial search providers would have included the relevant records.  As a result, the court vacated the Board's decision and remanded, noting that the rejection may be reinstated if there was sufficient proof of when the commercial databases indexed the manuscript.

More detail of In re Lister after the jump.

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In a recent decision, the Federal Circuit addressed a variety of claim construction, infringement, and validity issues in an appeal from the International Trade Commission.  After construing five disputed claim terms, the ITC held one of four representative products infringed, the remaining three did not infringe, and one claim invalid as anticipated.  Both parties appealed.

The Federal Circuit affirmed in part, reversed in part, and remanded.  The court affirmed the ITC's construction of 4 of the 5 disputed terms.  However, the modification of one term resulted in the court vacating the ITC's determination of invalidity of one claim, as well as infringement of two of the four devices.  The Federal Circuit affirmed the finding of noninfringement of the other two devices, and remanded for reconsideration of the various issues in light of the revised construction.

More detail of Linear Tech. Corp. v. Int'l Trade Comm'n after the jump.

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The Supreme Court of Canada recently made significant changes to its obviousness standard for patentability. The case addressed a dispute arising between the brand-name pharmaceutical manufacturer, Sanofi, and the Canadian generic manufacturer, Apotex.  The decision by the Supreme Court of Canada brings its obviousness standard closer to the standard recently set forth by the U.S. Supreme Court in KSR v. Teleflex. However, the Canadian obviousness standard still appears to be less stringent than the U.S. obviousness standard.  

More on Apotex, Inc. v. Sanofi-Synthelavo Canada after the jump.

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In a recent decision, the Federal Circuit affirmed a district court's determination, after a bench trial, that the asserted claim of a patent had not been proven anticipated or obvious.  The district court held that while the prior art showed the chemical structure of the claimed compound, it did not describe the separation of the two enantiomers of the compound, nor did it describe the appropriate salt form to use in tableting the compound.   As a result, the claim was not anticipated.  Further, the district court held the claim was not obvious, because the separation of the enantiomers had the unexpected effect of separating the beneficial effects of the compound (produced by one enantiomer) with the harmful side effects of the compound (produced by the other enantiomer).

The Federal Circuit affirmed.  After a detailed analysis of the facts, the court agreed with the district court's analysis that the disclosure of the chemical structure of the compound in the prior art was insufficient to either anticipate or render obvious a claim directed to one of the two enantiomers, given the difficulty and unpredictability in separating enantiomers and the unexpected division of the beneficial and harmful effects between the two enantiomers of this particular compound.

More detail of Sanofi-Synthelabo v. Apotex, Inc. after the jump.

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In a recent decision, the Federal Circuit affirmed a district court's grant of a preliminary injunction concerning the manufacture of an extended release formulation of an antibiotic. In a lengthy opinion, the Federal Circuit applied the Supreme Court's obvious-to-try logic from KSR to pharmaceutical patents. Notably, the court used the unpredictability of the pharmaceutical arts to find that, despite a prior art reference listing twelve different approaches in creating an extended release formula, the claimed formulation was (at least at the preliminary injunction stage) more than the predictable use of prior art elements according to their established functions.

The Federal Circuit also addressed the issue of inequitable conduct, reinforcing its holding in Kingsdown Medical that materiality alone does not automatically establish the bad faith necessary for a finding of inequitable conduct.

The panel majority, after an extensive review of case law regarding injunctive relief, held when determining likelihood of success, the court must examine the question with the ultimate issue in mind, namely whether the party will likely prevail on the issue.  Judge Gajarsa's dissent, on the other hand, took the panel majority to task for diverging from the Federal Circuit's precedent on the issue, and would have held a substantial question of validity and enforceability was raised, making the preliminary injunction improper.

More on Abbot Labs. v. Sandoz, Inc. after the jump.

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In a recent decision, the Federal Circuit affirmed a district court's finding of indefiniteness but reversed the district court's holding of anticipation of other claims.  The district court held the means-plus-function limitations did not have corresponding structure disclosed in the specification, rendering them indefinite, and that the combination of two examples in a prior art publication anticipated the remaining asserted claims.

The Federal Circuit agreed the means-plus-function limitations were indefinite.  The limitations were computer-implemented, which means to be definite, the specification must disclose "more than simply a general purpose computer or microprocessor," but instead must disclose "the special purpose computer programmed to perform the disclosed algorithm."  There was no such disclosure here, so the Federal Circuit held the claims were correctly held indefinite.

Regarding anticipation, however, the court reaffirmed its previous cases holding in order to anticipate, it is not enough for all elements of the claim to be disclosed in a single reference.  All the elements must also be disclosed as arranged in the claim.  Here, the claim elements were spread across two different examples given in the allegedly anticipatory reference, so the Federal Circuit reversed the district court's summary judgment of anticipation because the reference did not disclose the elements as they were arranged in the claim.

More detail of Net MoneyIN, Inc. v. VeriSign, Inc. after the jump.

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In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference.  In affirming the examiner, the Board determined the reference was prior art as of its provisional date, as long as the relied-upon disclosure in the reference was sufficiently supported in the provisional filing.

Based on language in the opinion, Examiners have the initial burden of showing the reference's entitlement to the provisional date.  The Board stated (emphasis added):

Although the Examiner's statement regarding the correspondence between the Narayanan patent and its underlying provisional application is somewhat terse and conclusory, the Examiner nonetheless found that both documents "clearly show the same subject matter"—a factual finding.  By making this factual finding, the Examiner then shifted the burden to Appellants to show why such a factual finding was erroneous.

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In a decision last week, the Federal Circuit vacated a limited exclusion order issued by the International Trade Commission in the most recent dispute between Qualcomm and Broadcom.  The case involved alleged infringement of one of Broadcom's patents relating to chips for wireless communication, specifically directed toward power saving technology.  Although Qualcomm was the only respondent in the proceeding, the ITC issued a limited exclusion order ("LEO") prohibiting downstream products from being imported if they contained the accused technology. 

On appeal, the Federal Circuit affirmed various findings of the ITC, including the finding that the patent was not invalid and that Qualcomm did not directly infringe the patent.  However, the court vacated and remanded on the issue of induced infringement because the ITC applied the pre-DSU Medical standard for induced infringement.  Also, the Federal Circuit held that the ITC exceeded its authority in issuing an LEO for downstream products against parties who are not brought as respondents in this case.

More on Kyocera Wireless Corp. v. Int'l Trade Comm'n after the jump.

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The Federal Circuit recently affirmed a district court's finding of non-willful infringement for one product, reversed its claim construction and related finding of noninfringement of a second product, and vacated its judgment as a matter of law on the issue of anticipation.  The district court, at the charge conference near the end of the jury trial in this case, decided not to instruct the jury on anticipation, holding the defendant's anticipation argument was "iffy," and that the arguments were "best captured by obviousness."

The Federal Circuit held this determination was in error.  As stated by the court, "[a]n 'iffy' anticipation case, however, does not foreclose a favorable verdict."  Further, the court noted it is the party's right to make the strategic decision about which defenses to present to the jury, so long as there is sufficient evidence to generate a verdict in the party's favor.  The court rejected the contention that every anticipated claim is also obvious, and as a result of the lack of complete overlap between the defenses, remanded the case for a determination of whether the claims were anticipated.

Judge Mayer dissented on this issue.  In his opinion, the majority's conclusion regarding the overlap of anticipation and obviousness is incorrect.  He attacked the majority's citations as "unsupportable," observing the majority was "unable to cite a case remanding to the district court for consideration of anticipation, while at the same time sustaining a determination that the claims at issue are not obvious."

More detail of Cohesive Techs., Inc. v. Waters Corp. after the jump.

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