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Fish Federal Circuit Summary Service: Issue #303

July 31, 2007

Newsletters

Fish Federal Circuit Summary Service: Issue #303

July 31, 2007

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Judges Battle Over Whether Subset of Limitations is Obvious in View of Superset for Double Patenting
In re Metoprolol Succinate Patent Litigation In re Metoprolol Succinate Patent Litigation
Date: 7/23/07
Panel: Mayer, Schall (dissent-in-part), Gajarsa
Author: Gajarsa
District court: E.D. Mo
Trial judge: Sippel
Summary: Fed Cir affirms summary judgment of invalidity for double patenting but vacates summary judgment of inequitable conduct. Double Patenting: The second-issued patent simply claimed the compound “metoprolol succinate” and the first-issued patent recited that compound wrapped inside other layers to provide controlled release and to prevent any release inside the stomach. The Fed Cir noted that removing the layers would have been obvious (common sense); the patentee’s semantic distinctions between genus/species and element/combination were irrelevant. Conflicts in old CCPA decisions in this area were controlled by the latest CCPA decision (because the CCPA always sat en banc). Also, double patenting is not limited under General Foods only to what is claimed, so it did not matter that the first patent claimed a group of compounds that simply included metoprolol succinate.

Inequitable Conduct: The patentee had resolved an early inventorship and ownership dispute with another party but never told the Patent Office. The district court erred by inferring deceptive intent solely from the harm that might have befallen the patent if the dispute had been disclosed; incentive to deceive is not (alone) intent to deceive.

In dissent, Judge Schall seemed to think the majority was finding a claim element alone to be “claimed” in the first patent, contrary to General Foods. In his view, the compound alone was very different from the compound wrapped in protective layers.

KEY WORDS: DOUBLE PATENTING (YES), INEQUITABLE CONDUCT (NO)

PTO Can Require More Specific Definition of Goods
In re Omega SA In re Omega SA
Date: 7/23/07
Panel: Newman, Friedman, Dyk
Author: Newman
District court: TTAB
Trial judge:
Summary: Federal Circuit affirms refusal to register mark for chronographs,” where applicant refused to limit the goods to watches (and not also time recording chronographs). The decision was well within the Board’s discretion in preventing confusion, would not adversely affect Omega’s other chronograph-based marks, and was not inconsistent with more general international classifications. The big issue in this case had been whether changing requirements at the PTO would threaten many existing marks, but the PTO provided supplemental briefing emphasizing that there would not be a problem.

 

KEY WORDS: TRADEMARK

Court Pushes Aside Many Reasons to Narrow the Claims
Saunders Group, Inc. v. Comfortrac, Inc. Saunders Group, Inc. v. Comfortrac, Inc.
Date: 6/27/07
Panel: Michel, Bryson, Dyk
Author: Bryson
District court: E.D. Va.
Trial judge: Brinkema
Summary: Fed Cir vacates summary judgment of noninfringement for patent on a portable cervical traction device. The district court held that recited pneumatic cylinders needed to have pressure-activated seals even though such a limitation was not explicitly in the asserted claims but was in other claims, because the patent discussed no other approach and the prosecution included a clear disclaimer. The Federal Circuit disagreed, emphasizing the absence of the limitation in other claims, including dependent claims. Extra language in the dependent claims did not matter because it was merely definitional, and thus redundant. Also, when the applicants filed their continuation application, they removed the limitation from some, but not all, the claims, and they filed a Petition to Make Special, asserting that the claims covered defendant’s product. Certain functional language in the claims did not require the limitation because the patent never identified pressure-activated seals as the only way to achieve the function, and also did not criticize the prior art as did the specification in Alloc. As for the prosecution statements, they were made for claims in a parent application that actually included the limitation, and the overlapping argument, though giving up something, did not give up all structures that did not use a pressure-activated seal. The issue was also not so close to permit construing the claims to save their validity — any validity issues would be handled on remand, see Liebel-Flarsheim. The Fed Cir admitted that this was a tough case.

 

KEY WORDS: CLAIM CONSTRUCTION (BROAD), DUAL RULE (BROAD), CLAIM DIFFERENTIATION (YES), ORDINARY MEANING (YES), RELATED PATENTS (NO), PROSECUTION DISCLAIMER (NO), SAVING VALIDITY (NO)

Term “Near” Adequately Definite: No Inequitable Conduct Where Non-Disclosure was Cured
Young v. Lumenis, Inc. Young v. Lumenis, Inc.
Date: 6/27/07
Panel: Lourie, Prost, Moore
Author: Lourie
District court: S.D. Ohio
Trial judge: Marbley
Summary: Fed Cir vacates summary judgment of unenforceability and judgment of invalidity for indefiniteness. The invention was a method for laser declawing a cat by cutting the skin “near” the knuckle, retracting the skin, cutting the claw, and letting the skin r-cover the area.

Indefiniteness: The claims and specification made adequately clear that “near” meant “close to or at least the edge of.” Numeric limitations were not needed because cats vary in size. The case was unlike Amgen because the intrinsic evidence provided guidance, and there were no rejections followed by amendments that introduced vague language for distinguishing over the prior art: “When intrinsic evidence resolves the claim construction, a term is not ‘ insolubly ambiguous,’ and thus reference to the prior art is not needed.”

Inequitable Conduct: The applicants waited past one office action (and after an inequitable conduct motion had been filed) to disclose to the examiner an author’s testimony about a figure in her part art book, when the book itself was already before the examiner. On the non-disclosure, the examiner received the deposition testimony before a final office action, so disclosure was timely and at a minimum, it cured any earlier problem. For alleged misrepresentations about what the prior art figure disclosed, applicant’s statements were attorney argument rather than factual statements, were not unreasonable, and the examiner was perfectly capable of studying the figure. The court seems to go a long way to find no inequitable conduct here.

KEY WORDS: INDEFINITENESS (NO), INEQUITABLE CONDUCT (NO), CURE (YES), NON-DISCLOSURE (NO), MISREPRESENTATION (NO)

Lawyer Who Took Over From Invention Promotion Firm is Excluded From Practice
Bender v. Dudas Bender v. Dudas
Date: 6/21/07
Panel: Rader, Plager, Linn
Author: Linn
District court: D.D.C.
Trial judge: Walton
Summary: Federal Circuit affirms summary judgment upholding lawyer’s exclusion. Bender took over prosecution of 1,000 design patent applications for an invention promotion firm, but he never clearly explained to his new clients the lack of value in design patents. Substantial evidence supported in the PTO’s findings that: (1) Bender neglected a matter entrusted to him by not telling his clients the difference between design and utility patents, and by not telling them about final rejections for over three months (where he refused to cover extension fees); (2) his payments came from the promotion firm so he had a conflict of interest that he never disclosed; (3) his evasive answers to the PTO constituted conduct prejudicial to the administration of justice.

 

KEY WORDS: ATTORNEY DISCIPLINE (YES)

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