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Fish Federal Circuit Summary Service: Issue # 289

January 2, 2007

Newsletters

Fish Federal Circuit Summary Service: Issue # 289

January 2, 2007

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A Prosecutor’s Subjective Mistake in Understanding Scope of Invention Is Not An Unmistakable Surrender of Subject Matter Prohibited by Reissue Recapture Rule
Medtronic, Inc. v. Guidant Corp. v. Click here to download the case
Date: Oct. 21, 2006
Panel: Michel, Schall, Dyk
Author: Schall
District court: D. Del.
Trial judge: Robinson
Summary: Fed Cir affirms bench trial judgment that reissued patent was not invalid in light of rule against recapturing surrendered subject matter through reissuance of patent. The Guidant patent relates to a pacemaker with improved contraction patterns to increase blood flow through the heart. Although the specification discloses numerous embodiments including an “unconditional” embodiment, a “conditional” embodiment (“conditional” and “unconditional” refer to the way the disclosed pacemaker delivers pacing pulses), and an embodiment with a single sensing electrode, the originally issued claims appeared to cover only the “conditional” embodiment and Guidant subsequently obtained a reissued patent with new claims covering the “unconditional” and the single-sensing-electrode embodiments. “When we consider whether subject matter was ‘surrendered,’ we look at whether there was a deliberate withdrawal or amendment in order to secure the patent, as this kind of deliberate action is not the inadvertence or mistake that reissue is meant to remedy.” 465 F.3d at 1375. As to the new claims directed to the “unconditional” embodiment, the Fed Cir held that the recapture rule does not prohibit the addition through reissue of subject matter omitted due to the failure of the examiner and prosecuting attorney to consider an embodiment as part of the invention. In addition, the “unconditional” embodiment could have been included in the original patent, and there was no evidence of “a clear and unmistakable” surrender of the embodiment during prosecution as required by precedent. As to the “one sensing electrode” embodiment, the Fed Cir determined that, once properly construed, the originally issued claims covered this embodiment and the patentee’s prosecution argument were not “unmistakable assertions in support of patentability over the embodiment with a single sensing electrode” that would constitute the surrender of subject matter. In his partial dissent, Judge Dyk disagreed with the ruling on the “unconditional” embodiment, because an “objective observer” of the prosecution history would conclude that the patentee deliberately surrendered the embodiment to avoid a prior art rejection.

KEY WORDS: REISSUE, RECAPTURE RULE, SURRENDER, AMENDMENT, OBJECTIVE/SUBJECTIVE

Default Judgment Resulting From Trademark Owner’s Choice To Not Defend Opposition to Registration Does Not Give Rise to Claim Preclusion
Sharp Kabushiki Kaisha v. ThinkSharp, Inc. v. Click here to download the case
Date: May 30, 2006
Panel: Newman, Lourie, Schall
Author: Newman
Court: TTAB
Summary: Fed Cir affirms TTAB’s dismissal of Sharp’s opposition to the registration of ThinkSharp’s mark. ThinkSharp first filed an application to register the word mark, and then filed a second application for a word-and-design registration. ThinkSharp only defended the word mark application in response to Sharp’s oppositions to both applications, and the TTAB entered default judgment on the word-and-design application but ultimately allowed the registration of the word mark. Sharp argued that the default judgment on the word-and-design application constituted claim preclusion on the word mark application, but the TTAB and the Fed Cir disagreed. Although claim preclusion may arise from a default judgment entered by the TTAB, “the imposition of claim preclusion in the present case would not further this purpose [underlying the res judicata doctrine], for not only are the marks not identical, but the issues of likelihood of confusion and dilution were not litigated in the defaulted opposition. Precedent and sound administrative policy support the Board’s reasoning that a trademark owner is entitled to choose which opposition to defend, when the proceedings are not an attempt to evade the effect of a previous adverse judgment on the merits.” 448 F.3d at 1372.

KEY WORDS: TTAB, TRADEMARK, LIKELIHOOD OF CONFUSION, DILUTION, RES JUDICATA (CLAIM PRECLUSION)

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