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IP Litigation

No district court review for patent owner in ex parte reexamination;

April 11, 2014

IP Litigation

No district court review for patent owner in ex parte reexamination;

April 11, 2014

Back to Fish's Litigation Blog

 

Fed. Cir. affirms dismissal for lack of jurisdiction to review ex parte reexamination decision but treats the case as if on direct appeal from the BPAI and affirms obviousness rejection.

In re Teles AG Informationstechnologien, ___ F.3d ___ (Fed. Cir. Apr. 4, 2014) (DYK, Moore, Wallach) (D.D.C.: Howell, but treated as if directly appealed from BPAI) (1 of 5 stars) 

Jurisdiction: Fed Cir holds that the 1999 amendments eliminated section 145 review by a patent owner in ex parte reexamination.  In particular, section 141 added that “[a] patent owner . . . may appeal . . . only to the [Federal Circuit],” while amendments to sections 134 and 145 suggested patented owners could not seek district court review.  Section 306’s (which governs court review of ex parte reexaminations) continuing reference to section 145 “was a drafting error” corrected in a 2011.  Teles’ legislative history arguments, including reliance on bills that were not passed and ambiguous statements of individual members, were unpersuasive.  Nevertheless, the Fed Cir could review the case as if it were a direct appeal that the district court transferred because it was in the “interest of justice” to do so because Teles’ appeal deadline had long expired.

Claim Construction:  The 112/6 function for the term “means to produce the control signal” was the broad one in the claim, not the narrower function in the specification.  Moreover, Mayo’s discussion of a patent’s “inventive concept” did not justify Teles’ proposed narrowing of the function:  “Mayo does not speak to claim construction.  The inventive concept aspect of its discussion has no bearing on claim construction.”  Slip op. at 19.

Obviousness: With the broad claim construction, the prior art disclosed a limitation Teles argued was missing, and had motivation to combine where one reference “already anticipates redesigning” structure that a second reference described how to redesign.

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Blog Authors

Joanna M. Fuller | Associate

Ms. Fuller represents pharmaceutical and high tech clients in patent litigation nationwide. Her cases have encompassed a wide range of technology, including pharmaceuticals, video coding, backup and recovery software, GPS technology, medical software, network security software,...

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