Posts Tagged: "Judge Alan Lourie"

IPR Time-Bar Applies Even If Patent Infringement Suit Voluntarily Dismissed

In Click-To-Call Technologies v. Ingenio, Inc., Yellowpages.com, LLC, the Federal Circuit, sitting en banc, held §315(b) precludes IPR institution when the IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, even if the district court action in which the petitioner was so served was voluntarily dismissed without prejudice.  

CAFC Affirms Invalidation of Water Recreation Device Patent Over Newman Dissent

In Zup v. Nash Manufacturing, ZUP filed suit, alleging contributory infringement and induced infringement of the patent-at-issue, trade secret misappropriation under Virginia law, and breach of contract.  Nash counterclaimed, seeking declaratory judgment as to non-infringement and invalidity… Prior art references aiming to overcome problems similar to those addressed by a patent can support a motivation to combine invalidating references, and for evidence of a long-felt but unresolved need to be considered, the need must be solved by an invention that is more than minimally different from the prior art… Judge Newman dissented, finding that the majority applied an incorrect analysis of the obviousness factors. In her view, the prior art provides no suggestion to make the specific modifications made by the patent-at-issue, and the only source of those modifications is judicial hindsight.

En banc CAFC: Patent applicant Not required to pay PTO attorney fees in District Court appeal

NantKwest filed suit in district court under 35 U.S.C. § 145 to contest the PTO’s rejection of its patent application. The USPTO prevailed and filed a motion for reimbursement of all of its litigation expenses, including attorney’s fees. 35 U.S.C. § 145 requires that “all expenses of the proceeding be paid by the applicant,” which the USPTO claimed included their fees and costs… While Congress can create fee-shifting statutes, 35 U.S.C. § 145 did not reflect explicit congressional authorization for fee-shifting that would displace the American Rule.

Federal Circuit Affirms District Court’s Finding of Validity of Claims Directed to Aveed®

When relying on scientific guidelines to support an obviousness rationale, practitioners should offer evidence for why contradictory guidelines should be discounted. A claimed constituent is not “necessarily present” if the prior art reference lists several alternative constituents and a skilled artisan could not reasonably deduce that the authors of the prior art reference used the claimed constituent.

The Broadest Reasonable Claim Interpretation Cannot Exceed the Specification

TF3’s patent-in-suit is for a “hair styling device” that automated the curling of hair. TF3 appealed the decision of the Board in an IPR requested by Tre Milano. Based upon its broad construction of certain claim terms, the Board held that two prior art references made the challenged patent claims invalid for anticipation. TF3 appealed. The Federal Circuit reversed the Board’s decision because it imposed a claim construction that was broader than the description in the patent specification. This enlarged the claims beyond their correct scope, even under a “broadest reasonable interpretation” standard. The Federal Circuit noted that “[a]bove all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.”

Prescription Tracking Patents Confirmed as Unpatentable After IPR Appeal

The Federal Circuit reviewed whether certain prior art was “publicly accessible,” because Jazz alleged the material was not a “printed publication” under Section 102(b). Jazz argued that the material, meeting minutes, transcripts, and slides pertinent to an FDA advisory meeting scheduled during the review process for a particular “sensitive drug” (Xyrem), failed to meet a “searchability or indexing” requirement and that the Board erred by “equating the constructive notice provided by the Federal Register with the legal standard for prior art.” The Court rejected both arguments, relying on three precedents, MIT, Klopfenstein, and Medtronic, to analogize and proceed on a “case-by-case” analysis of the facts and circumstances surrounding the disclosure to the public – the proper inquiry for determining if a reference is a “printed publication.” The Court looked at three factors: the breadth of the dissemination; the amount of time the materials were available before the critical date; and, the presence or absence of an expectation of confidentiality. Comparing the facts to its three precedents, the Court found that each of the three factors supported the conclusion that the materials were printed publications and thus prior art.

Nasal Spray Patents Covering Migraine Drug Zomig Not Invalid As Obvious

The sole question on appeal was whether it would have been obvious to make zolmitriptan into a nasal spray. The Federal Circuit agreed with the district court that the prior art taught away from formulating zolmitriptan for intranasal administration.

Did Federal Circuit Fail to Understand the Technology? We Will Never Know Thanks to Rule 36!

But did Judge Reyna really fail to understand the importance that a web page and the page server are not the same thing as the Federal Circuit adjourned to deliberate? Did he and the other judges on the panel continue to have this important, yet fundamental misconception during deliberations? Did the reality that a web page and a page server are not the same thing become appreciated and understood by the Federal Circuit panel, or did this fundamental misconception perpetuate itself up to and through the decision making process? Did counsel for IBM managed to mislead the panel? Did the panel even realize that IBM had made the exact opposite argument about WebSphere technology at the district court? The sad, and rather inexplicable reality is it is impossible to know whether the Federal Circuit was mislead, simply didn’t understand the technology, or was even hoodwinked.

CAFC Vacates Board for Moving Target Rejections, Failure to Consider Reply Brief

The moving target rejections were largely due to the fact that the examiner’s first clear explanation that she was relying on structural identity, and not inherency, appeared in the examiner’s answer. Judge Reyna explained: “[T]he equivocal nature of the examiner’s and Board’s remarks throughout the examination of the ‘989 application, including whether inherency was the basis for the rejection, clouded the issues before Durance.”

Federal Circuit Vacates, Remands After PTAB Fails to Consider Arguments in Reply Brief

On Friday, June 1st, the Court of Appeals for the Federal Circuit issued a decision in In re: Durance striking down a decision by the Patent Trial and Appeal Board (PTAB) that affirmed a patent examiner’s obviousness rejection of a microwave vacuum-drying apparatus and associated method. The Federal Circuit panel consisting of Judges Alan Lourie, Jimmie Reyna and Raymond Chen…

Federal Circuit expands printed matter doctrine to include information and mental steps

In Praxair Distribution v. Mallinckrodt Hospital Products, Praxair petitioned for inter partes review of claims 1-19 of the ’112 patent, which the Board instituted. The Board held that claims 1-8 and 10-19 would have been obvious over four prior art references. However, claim 9 survived. Praxair appealed from the Board’s decision regarding claim 9, and Mallinckrodt cross-appealed regarding claims 1-8 and 10-11. The Federal Circuit affirmed the Board’s decision holding claims 1-8 and 10 unpatentable as obvious. Judge Newman concurred in judgment of unpatentability of claims 1-11, but disagreed with the Court’s view of the “printed matter doctrine” and its application to “information” and “mental steps.”

CAFC Affirms Rejection of Application for Incorrect Inventorship

The Federal Circuit recently affirmed a decision of the United States Patent and Trademark Office to reject VerHoef’s pending application 13/328,201 for a dog harness under pre-AIA Section 102(f) because the applicant “did not himself invent the subject matter sought to be patented.” At the Federal Circuit, VerHoef conceded that the figure “8” loop was an essential feature, and did not dispute that the veterinarian, and not he, contributed the idea of the figure eight loop.

Preclusion Applies Only If Scope of Patent Claims in Both Suits are Essentially the Same

In SimpleAir v. Google, The district court found claim preclusion applied because the patents at issue had the same title and specification as previously litigated patents, SimpleAir files a terminal disclaimer to overcome obviousness-type double patenting, and Simple Air could have included the newly asserted patents in its previous actions. However, the district court never compared the claims of the patent at issue to the claims of the previously litigated patents.

Federal Circuit says Kessler Doctrine did not preclude claims asserted against Google

Google also argued that, if claim preclusion did not bar SimpleAir’s infringement claims, than the Kessler doctrine barred them. This doctrine, stemming from a 1907 decision by the U.S. Supreme Court in Kessler v. Eldred, has been used to protect a party’s rights to continue a practice accused of infringement if an earlier judgment found that essentially the same activity did not infringe the patent. While the Federal Circuit has relied on the Kesler doctrine to bar patent assertion against similar activities or products found not to infringe, the doctrine has not been applied to bar a broader set of rights than would have been barred by claim preclusion.

Federal Circuit Hears Oral Arguments in Case Involving Question of Joint Inventorship Under Section 102(f)

In a prior abandoned patent application, VerHoef listed himself as joint inventor of the dog mobility device with Dr. Lamb, the veterinarian making the suggestion; this joint venture failed and then each party tried to file competing patent applications. This was all done at a time when VerHoef was not well acquainted with patent law according to Thomas Loop, patent attorney at Loop IP Law representing VerHoef in the case. “All inventors take limitations and elements from others, that’s the essence of inventions,” Loop argued to the Federal Circuit panel of Circuit Judges Pauline Newman, Haldane Robert Mayer and Alan Lourie. “[VerHoef] had the entire reduction to practice of the invention… she blurted out an idea, and he adopted it. That’s what happened here.” Although VerHoef agreed that Dr. Lamb did provide the suggestion, Loop argued that this suggestion did not elevate the veterinarian to the level of inventor.