Filewrapper® | A patent, trademark, and copyright law blog - Anticipation

Dependent claim can't be obvious when indepdendent claim is not; verdict vacated as inconsistent

Mon, 19 Oct 2009 17:10:00-0500

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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Manuscript filed with copyright office not necessarily publicly available as of filing date

Fri, 25 Sep 2009 10:35:00-0500

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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Close but no cigar: ITC gets 4 of 5 claim constructions correct, but must reconsider 2 issues

Mon, 15 Jun 2009 21:03:00-0500

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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Supreme Court of Canada tightens obviousness standard

Mon, 23 Mar 2009 16:26:00-0500

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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Prior art disclosure of compound does not anticipate substantially separated enantiomer

Mon, 23 Mar 2009 09:34:00-0500

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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Substantial question regarding validity insufficient to defeat likelihood of success?

Tue, 09 Dec 2008 09:24:00-0500

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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Federal Circuit reaffirms anticipatory reference must have all elements as arranged in the claim

Fri, 31 Oct 2008 21:00:00-0500

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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BPAI: 102(e) art can be effective prior art as of provisional priority date

Wed, 29 Oct 2008 15:06:00-0500

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.

More detail of Ex parte Yamaguchi after the jump.

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ITC cannot enter limited exclusion order against non-parties

Tue, 21 Oct 2008 11:17:00-0500

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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Anticipation no longer the epitome of obviousness? Claims can be anticipated but nonobvious

Thu, 16 Oct 2008 16:37:00-0500

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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General disclosure in prior art not enabling for specific pharmaceutical compound's use in treatment

Tue, 07 Oct 2008 07:31:00-0500

In a decision last week, the Federal Circuit affirmed a district court's holding that a prior art patent was not enabling and thus did not anticipate the patent-in-suit. Applying the In re Wands factors, the district court held undue experimentation would be required in order to produce the claimed invention based on the prior art's disclosure.

The Federal Circuit affirmed, and observed the asserted prior art was broad and general without sufficient direction to practice the claimed invention. Moreover, the asserted prior art provided no working examples of the invention claimed in the patent-in-suit. Finally, the court held the district court correctly placed the burden of proving non-enablement on the patentee, given the prior art reference was an issued U.S. Patent, but it was not necessary for the district court to specifically articulate its burden-shifting framework.

More on Impax Labs, Inc. v. Aventis Pharms Inc., after the jump.

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When factual inquiries underlying obviousness determination disputed, summary judgment improper

Thu, 25 Sep 2008 10:57:00-0500

In a decision Friday, the Federal Circuit affirmed a district court's summary judgment of no anticipation, no invalidity for failure to comply with the written description requirement, and infringement, but reversed the district court's summary judgment of no invalidity based on obviousness. In an unusual procedural move, the parties stipulated that for the issues on which both parties moved for summary judgment, the district court could make findings of fact based on the summary judgment record, making it similar to an inter partes proceeding at the TTAB for those issues. This stipulation included all issues except obviousness.

The Federal Circuit found no clear error in the district court's determination of the other issues, but held there was a genuine issue of fact that should have prevented summary judgment on obviousness. The court noted the Graham factual inquiries underlying the obviousness determination were legitimately in dispute, thus rendering summary judgment inappropriate on that issue.

More detail of Commonwealth Sci. & Indus. Research Org. v. Buffalo Tech., Inc. after the jump.

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Federal Circuit: The difference between substantial cure and full cure is not insubstantial

Fri, 22 Aug 2008 16:13:00-0500

In a decision yesterday, the Federal Circuit affirmed a grant of summary judgment of anticipation and obviousness. While the court disagreed with the district court's conclusion that the prior art expressly anticipated the asserted claims as a matter of law, the court did conclude that the prior art inherently disclosed the relevant limitations as a matter of law. Further, because the patentee's obviousness arguments were contingent on its anticipation arguments being successful, the court likewise affirmed the summary judgment of obviousness.

Interestingly, in a footnote the court noted that while the patentee challenged the district court's claim construction of one term in its brief, it conceded at oral argument that the issue of claim construction was not properly before the court because the patentee did not contend that the resolution of the anticipation issue depended on the construction of the term.

More on Leggett & Platt, Inc. v. VUTEk, Inc. after the jump.

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Irreparable harm to exclusive licensee cannot support injunction; willfulness vacated post-Seagate

Wed, 20 Aug 2008 10:17:00-0500

In a decision Monday, the Federal Circuit addressed a range of issues and ultimately affirmed a district court's denial of injunctive relief and, in light of the intervening Seagate decision, vacated and remanded the case for reconsideration regarding willfulness. The court also affirmed the district court's finding of no invalidity and the infringement of some claims under the doctrine of equivalents.

Regarding the denial of an injunction, the Federal Circuit agreed with the district court that because the only irreparable harm alleged was to the plaintiff's exclusive licensee, rather than the plaintiff, there was no pertinent evidence of irreparable harm to support granting an injunction. Regarding willfulness, the court determined that the district court's jury instruction (based on the Underwater Devices affirmative duty of care standard) was not correct under the Seagate "objective recklessness" standard. The court held that the improper instruction was not harmless error and remanded the issue to the district court for further consideration as to whether the defendant's conduct was sufficiently reckless to be considered willful.

More on Voda v. Cordis Corp. after the jump.

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BPAI: when prior art teaches away, expectation of success cannot support obviousness rejection

Sat, 16 Aug 2008 20:00:00-0500

In a recent precedential decision by the Board of Patent Appeals and Interferences, the board reversed an Examiner's rejections based on double patenting, anticipation, and obviousness. The Board held the Examiner inappropriately rejected the claims for double patenting because there was insufficient evidence to show the compositions claimed in the prior art possessed the viscosity level claimed in the current application or that they would be obvious variants.

The Board similarly reversed the anticipation and obviousness rejections. The Board noted the Examiner did not provide "an adequate basis – based on evidence or scientific reasoning – to support" the argument that the prior art compounds inherently met the viscosity limitation. Further, the examiner's logic that the compounds were obvious based on the motivation in the art to optimize the viscosity of the prior art formulations was also rejected. The Board noted that though "the discovery of an optimum value of a variable in a known process is normally obvious," here the cited references all indicated that low viscosity, not the claimed high viscosity, was desirable. In fact, the Board, citing KSR, highlighted that there still must be a reason to make the asserted modifications to the prior art. This is particularly the case when the prior art teaches away:

[W]hen the prior art teaches away from the claimed solution as presented here, obviousness cannot be proven merely by showing that a known composition could have been modified by routine experimentation or solely on the expectation of success; it must be shown that those of ordinary skill in the art would have had some apparent reason to modify the known composition in a way that would result in the claimed composition.

More on Ex parte Whalen after the jump.

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