Posts Tagged: "CACF"

Where parties dispute proper scope of claims, Board must provide an explicit claim construction

The Board declined to provide a construction of “settling speed” and determined that the claims were not invalid as anticipated. Homeland appealed… When parties dispute the proper scope of claims, the Board must provide an explicit claim construction. The Court may construe the claims de novo. When comparing prior art evidence to properly construed claims, the Court may disregard expert testimony if it is plainly inconsistent with the written record, even if the testimony was unrebutted.

Board’s analysis internally inconsistent, Federal Circuit vacates inter partes reexam

At the Federal Circuit, Honeywell argued that the Board erred in (1) finding a motivation to combine the references with a reasonable expectation of success, (2) rejecting Honeywell’s objective evidence of patentability, and (3) relying on a new ground of rejection (Omure), without giving Honeywell notice and opportunity to respond. The Court found that the Board improperly relied on inherency to find the claims obvious and in its analysis of motivation to combine. First, the Board’s analysis was internally inconsistent. While finding that “the claimed combination’s stability/miscibility is an inherent property of HFO-123yf and cannot confer patentability, the Board also acknowledged that inherent properties must be considered if they demonstrate unexpected and nonobvious results.

Inherent obviousness necessitates specific motivation to modify lead compound in pharma process due to surprising, unexpected results

Inherent obviousness cannot be based on what the inventor thought, and, in addition, the results in a particular case may not be inherently obvious depending on what was expected by a person of ordinary skill. The court pointed out “’the mere fact that a certain thing may result from a given set of circumstances is not sufficient’ to render the results inherent.” Millennium Pharmaceuticals, 2017 WL 3013204, at *6 (citations omitted by author). The court also held that it is never appropriate to consider “what the inventor intended when the experiment was performed,” even though Millennium “conceded as a matter of law that the ester is a ‘natural result’ of freeze-drying bortezomib with mannitol.” Id. Thus, hindsight reasoning should never be applied and, obviousness is “measured objectively in light of the prior art, as viewed by a person of ordinary skill in the invention.”

Federal Circuit invalidates another patent upheld at PTAB after IPR

The Federal Circuit issued a decision in Homeland Housewares, LLC v. Whirlpool Corporation, which ought to be completely unnerving to every owner of a U.S. patent grant. Hearing an appeal from a decision of the Patent Trial and Appeal Board (PTAB), the panel voted 2-1 in favor of Homeland Housewares and overturned a final written decision that had confirmed that challenged claims from a Whirlpool patent were valid. So even when a patent owner manages to escape the clutches of the PTAB and prevails no patent is ever truly safe any longer. A dissent was filed by Judge Newman, who chastised the majority for rewriting the claims of the patent in a way that more broadly stated the invention than did the patentee.

Federal Circuit says Will.i.am not allowed to trademark I AM

William Adams is the well-known front man for the music group The Black Eyed Peas and is known as will.i.am. Adams’ company – i.am.symbolic, llc – already owns trademarks on WILL.I.AM for certain goods and services, and also the mark I AM (typed drawing) for clothing in class 25. The trademark examining attorney refused registration of the standard character trademark I AM on the ground of likelihood of confusion with existing registered trademarks. The Trademark Trial and Appeal Board affirmed. Because the TTAB did not err in its likelihood of confusion conclusion the Federal Circuit, in an opinion by Judge Lourie (joined by Chief Judge Prost and Judge Schall) affirmed.