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CAFC Weekly: April 16, 2010

by Orlando Lopez

This was a very busy week at the CAFC with extremely diverse opinions. Although there is no groundbreaking case, there are many good lessons in this week’s opinions.

In In re Suitco Surfaces, an opinion related to a re-examination of a patent for floor finishing material, the CAFC finds that the USPTO must give the claims the broadest interpretation consistent with the specification. The Court states that “the PTO [does not have] an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.” This is a welcome statement for those who prosecute applications.

The opinion in SIRF Technology et al. v. ITC, a case involving patents for Assisted GPS, relates mostly to whether a party can sue (in jargon, whether the party has “standing”). The opinion repeats the holding in DDB Techs, that the present tense automatic language in an employment agreement, “agrees to and does hereby grant and assigns,” results in automatic assignment (A good thing to remember in writing employment agreements). One important component of the opinion is the fact that although the recordation of an assignment of a patent does not prove the validity of the assignment, the recordation creates a presumption of validity which the party challenging the validity must disprove (“rebuttable presumption of validity”).

In Anascape Ltd. v. Nintendo, a case involving video game controllers, the CAFC stresses the fact that a parent (earlier filed) application must provide support for written description and enablement, for the patent claims in the child (later filed) application, as long as the child application has the same priority filing date of the parent application. In this case, the application in question is a continuation in part of a previous application. The CAFC finds that the claims of the patent in suit are not supported by the parent application and finds the patent in suit invalid. This requirement of a parent application providing support for the claims in the subsequent application should also be heeded in the case of conversion of provisional patent applications.

The opinion in MBO Labs v. Becton Dickinson comes on the heels of a USPTO webinar on reissue, which is a procedure used to correct errors in a patent, including broadening claims if done within two years of issue. In a reissue proceeding, there is a rule against recapture; that is, claims can not be broadened to undo narrowing amendments made during prosecution to overcome prior art. The holding in this case clarifies that the rule against recapture applies also to narrowing amendments made during the prosecution of related applications.

Three other cases roundup the week in terms of patents: Verizon v. Cox; Novo Nordisk A/S v. Caraco Pharmaceutical Laboratories, Ltd.; and Hornback v. US.

In Verizon v. Cox, a case that reminds us of the deference given to jury verdicts, one issue under appeal is whether comments made in closing argument regarding the claim scope “deprived the jury of its ability to decide the case.” It is important to note that claim interpretation is up to the judge and the judge instructs the jury. Here, the CAFC finds that the arguments did not deprive the jury of its ability to decide the case.

In Novo Nordisk, a case in which the CAFC interpreted the 2003 amendment to the Hatch-Waxman Act (for an in-depth discussion see the Patent Docs blog of April 27, 2010), the issue is an injunction ordering Novo to change one Orange Book listing. The opinion has good background material on ANDAs and the Orange Book, as well as a good discussion of statutory construction. The Court interpreted the statute and reversed the injunction.

In Hornback v. US, a case that underscores the difficulty of suing the US after a patent application is placed under a secrecy order, the issue also revolves around statute interpretation. In this case it is the interpretation of 35 USC 183, in order to decide whether the statute covers compensation for government use after the lifting of the secrecy order, but before the issuing of the patent. The CAFC holds that “use of the invention in 35 U.S.C. § 183 does not include use of an invention after a patent for the invention has issued.” This can have a negative effect for recovery. Inventors beware!

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