The ObvIPat Blog
August 24th, 2010
by Orlando Lopez
There were only two precedential opinions handed down during the week ending July 30th. These opinions related to claim construction and to obviousness double patenting.
In Becton Dickinson v. Tyco Healthcare, a case related to a safety needle, the claim construction was reviewed by the CAFC. The phrase under question, “spring means connected to said hinged arm,” had been interpreted by the District Court as not requiring a component performing the spring function that was a distinct structural element from the hinged arm. The CAFC disagreed with the claim interpretation and Justice Gajarza dissented. The CAFC held that the spring means were separate from the hinged arm and that the claim requires two structures. The holding in this case should not be taken to mean that two structures are always necessary for separate components in one element of the claim (usually referred to as a limitation); however, if the same structure element is going to perform two claimed functions, then there should be some discussion of this in the specification. Read the rest of this entry »
August 19th, 2010
by Orlando Lopez
The Patent Stimulus Package is not WPA for patent attorneys and it is not a way for patent attorneys to get big bonuses, not that I would oppose that! The Patent Stimulus idea is based on the fact that, if the time it takes to obtain a patent, or at least to get the first response from the Patent Office, can be decreased to a reasonable time (such as 12-18 months), then the increase in the number of patents allowed would lead to the formation of new emerging companies. This idea, expressed by Judge Michel (Ret.), the recently retired Chief Judge of the CAFC, was commented on last Sunday by Liz Claman, an anchor on Fox Business News.
There are also other forms of possible Patent Stimulus. Read the rest of this entry »
August 13th, 2010
by Orlando Lopez
As the Supreme Court’s Bilski decision starts to be applied, it is important to look at the decision and identify which areas are a majority opinion and which areas are statements by a plurality of the Court. The Bilski decision is similar to a mid-season Red Sox game, you cannot tell the players without a scorecard. The majority opinion was written by Justice Kennedy with Justices Scalia, Roberts, Thomas and Alito concurring; however, in the midst of the majority opinion there are two sections in which Justice Scalia did not join. Those two sections are statements by a plurality of the Court.
First, the majority opinion holds that the machine or transformation test is not the sole test for determining whether an invention recited in a method claim is patent eligible; however, the majority does find the results of the machine or transformation test a useful clue to patentability. Read the rest of this entry »
August 12th, 2010
by Orlando Lopez
There was only one precedential case this week, Wyers v. Master Lock, involving three patents assigned to Wyers, for hitch locks used to secure trailers attached to vehicles. The issue presented to the District Court jury was whether the patent claims were obvious. The jury found that the claims were not obvious. Master Lock’s motion for Judgment as a Matter Of Law stating that the patent claims were obvious was denied and Master Lock appealed. Whether a patent claim is obvious is a question of law based on underlying facts. The CAFC, giving no deference to the jury, found the patent claims at issue to be obvious as a matter of law. Besides bringing out the mongrel nature of questions of obviousness, the opinion also includes a good discussion of what is analogous art after the Supreme Court opinion in KSR, as well as a good discussion of motivation to combine references in order to find a claim obvious, as viewed after KSR.
July 30th, 2010
by Orlando Lopez
Although there were no precedential opinions this week, the order on Avid Identification Systems v. The Crystal Import Corporation is definitely of interest. The CAFC denied Avid’s petition for rehearing and rehearing en banc, as well as Avid’s motion to join in the pending en banc review of Therasense. Judge Newman’s dissent underscores the differences within the CAFC in regards to inequitable conduct. The end result of the order is that, as we have previously stated, the decision in the en banc rehearing of Therasense will not affect the expansion of the definition of “persons involved” resulting from Avid.
