CAFC : US PTO Litigation Alert™

Mid-July Developments

Scott Daniels | July 22, 2010

1. Board Reverses Rejection of Breed Airbag Patent

David Breed and Automotive Technologies International (ATI) won a victory yesterday at the PTO Board.  In a reexamination of their U.S. Patent No. 6,712,352 for an “arrangement for controlling deployment of a side airbag,” Breed and ATI substantially amended their claims to distinguish over certain prior art.  In doing so, however, they included claim wording that the examiner found to lack written description support in the ‘352 specification.  Although original claims under reexamination are not checked for compliance with 35 U.S.C. § 112, amendments to original claims and new claims are, and the examiner therefore rejected the pending claims.

The Board has now reversed the examiner, finding that the ‘352 specification is “sufficiently clear that the inventors possessed the claimed subject matter as evidenced by explicit identification of the problem of side airbag deployment causing injury to a child when the child’s head is against the airbag module, and statements indicating that the described invention addresses this identified problem.”
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Practice Note on Reissue Applications

Scott Daniels | July 14, 2010

People who follow the CAFC will undoubtedly recall the decision Pfizer v. Ranbaxy in which the CAFC found that claim 6 was invalid as an improper dependent claim under 35 U.S.C. § 112, ¶ 4 because it covered embodiments outside the scope of the claim on which it depended.  457 F.3d 1284, 1291 (Fed. Cir. 2006).   The loss was especially painful for Pfizer because the patent – U.S. Patent No. 5,273,995 – claimed its extremely successful cholesterol-controlling composition, Lipitor®.

Pfizer sought to overcome its problem with claim 6 by filing a reissue application where it corrected claim 6 and added two new claims, and by later filing a second reissue application (as a continuation of Pfizer’s first reissue application) where it deleted claim 6 altogether and added one new claim.  In March 2009, the PTO allowed Pfizer’s first reissue application as the ‘667 reissue patent in which claim 6 was rewritten in independent form.  Pfizer’s second reissue application is still pending at the PTO.
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Tessera Defends ITC Exclusion Order at CAFC

Scott Daniels | June 10, 2010

Last week I described the interesting issue raised in Tessera’s ITC case involving semiconductor packaging: whether the public interest is harmed if the ITC issues an exclusion order based on infringement of a patent that has been rejected as invalid in a copending but unfinished reexamination proceeding.
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Challenge at the CAFC to ITC Exclusion Order Based on Claims Rejected in Reexamination

Scott Daniels | June 2, 2010

Tessera’s ITC case involving computer chip packaging is of considerable commercial significance to the semiconductor industry.  But it also raises the fascinating legal question of whether the Commission should issue an exclusion order against infringing imported products where the patent claims have been rejected in copending reexamination proceedings.  Where the ITC finds violation of Section 337, the statute requires it to issue an exclusion order and/or a cease & desist order to protect the domestic industry, unless such relief would harm the public interest. Is the public interest harmed by the enforcement of patent claims currently under rejection at the PTO?
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MULLIGAN NO HELP TO CALLAWAY IN GOLF BALL CASE

Lee Wright | May 19, 2010

The possibility of PTO and the courts adopting different claim constructions has arisen in Callaway’s case against Acushnet for infringement of four golf ball patents.

In August 2009, the CAFC vacated a jury verdict because it contained an “irreconcilable inconsistency” – specifically, a finding that Callaway’s independent claim was non-obvious, but that a dependent claim was obvious.  In March of this year, after a second trial, the jury found that all the asserted Callaway claims were anticipated and obvious.  The case is now back at the CAFC awaiting decision.
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ROLLS-ROYCE PATENT RESCUED FROM INTERFERENCE

Scott Daniels | May 10, 2010

In 2003, the PTO Board declared an interference between the claims of U.S. Patent No. 6,071,077 belonging to Rolls-Royce, and the claims of a United Technologies patent application.  The invention was a fan blade configuration used in turbofan jet engines.  United Technologies, having an earlier priority date, was named the senior party, and Rolls-Royce, with the later date, the junior party.

Rolls-Royce argued that there was no “interference-in-fact” because its claims were patentably distinguishable over the claims of the United Technologies patent.
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CAFC REVERSES PTO’S BROAD CLAIM CONSTRUCTION

Scott Daniels | April 30, 2010

It is well-known that the PTO gives claims their broadest reasonable construction consistent with the specification, both in original examination and in reexamination.

But in the recent case In re Suitco Surface, the CAFC found that the PTO’s claim construction had been too broad. 
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CAFC APPLIES RECAPTURE RULE BROADLY

Scott Daniels | April 15, 2010

The CAFC held this week – in MBO Labs. v. Becton, Dickinson – that a reissue applicant may not recapture claimed subject matter that was surrendered in a related application.

The rule against recapture prohibits a patentee from broadening the scope of its claims during reissue to cover subject matter that it had previously surrendered during the prosecution of its original claims.  The rule exists because reissue is intended to correct “errors made without deceptive intent,” not to remove amendments or arguments made to convince an examiner to allow claims.  Further, competitors are allowed to rely upon past prosecution histories which show that an applicant has surrendered certain claimed subject matter.
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Non-Final Rejections in Reexamination Not Admissible in Jury Trial

Scott Daniels | August 14, 2009

The CAFC ruled today that non-final reexamination determinations are “of little relevance” to a jury’s consideration of the obviousness issue. Since the risk of the jury being “confused” by such determinations was high, the CAFC affirmed the trial judge’s exclusion of such a determination at trial.

In that case, Callaway had accused Acushnet of infringing a series of patents claiming golf balls. Acushnet replied by filing inter partes reexamination requests with the PTO, asserting that the patents were invalid over certain prior art.
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McNeil Vindicated at CAFC

Scott Daniels | July 31, 2009

McNeil-PPC, Inc. filed a request for reexamination of its U.S. Patent No. 6,310,269 in November 2002, and today, after more than six years and a series of adverse decisions at the PTO, it finally prevailed at the CAFC.
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