Federal Circuit Review – Issue 7 – 02-04-2014

Each week in the Federal Circuit Review, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson and Bob Schaffer




Board Erred by Treating Claimed “Receiver” As Unsupported “Means Plus Function” 

EnOcean GmbH v. Face International Corp., No. 2012-1645, 2014 U.S. App. LEXIS 1880 (Fed. Cir. Jan. 31, 2014) (Prost, J.). Click here for a copy of the opinion.

In 2010, the Board of Patent Appeals and Interferences declared an interference between EnOcean, owner of the rights to a pending application, and Face, the real party of interest in an issued patent claiming a self powered switch. The Board agreed with Face and treated several claims reciting a “receiver” as means-plus-function claims, although they did not recite the “means for” language. The Board concluded that these and other means-plus-function claims could not claim priority to EnOcean’s earlier PCT application—which antedated one of the obviousness references—because it found the specification did not support the “means for receiving” limitations. Ultimately the Board found all of EnOcean’s claims invalid as obvious.

The Federal Circuit disagreed with the Board. First, Face failed to overcome the presumption against invoking § 112 ¶ 6 based on EnOcean’s use of the term “receiver.” The Court found evidence, including scientific literature, expert declarations, and a factual finding by the Board, that the term “receiver” “conveys known structure” to those of skill in the art. Second, the earlier PCT provided sufficient detail for one skilled in the art to conclude that EnOcean was in possession of the invention as of the claimed priority date. The PCT only contained a single reference to a receiver (“[T]he switches . . . emit . . . radio frequency telegrams which are received by a single receiver . . . .”). However, this element was “well known as of the filing date,” so the inventors did not need to provide “cumbersome repetitions of what [was] already known and readily provided by the reference.” Slip op. at 11 (quoting Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1324 (Fed. Cir. 2010)). The PCT antedated a key reference, thereby eliminating it as prior art and overcoming the Board’s finding of obviousness. Thus, the Board’s ruling was vacated-in-part, and the Court remanded the case for further consideration of the interference proceeding.

The Author

Robert Schaffer & Joseph Robinson

Robert Schaffer & Joseph Robinson  

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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