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CAFC Weekly: July 9, 2010

by Orlando Lopez

In two precedential opinions, the CAFC considered priority dates of applications in one, and claim construction and damages in the other.

The CAFC, in the case of  In re Giacomini, held that for an application claiming priority of a provisional patent application, the resulting US patent or the published patent application will be considered prior art as of the filing date of the provisional patent application.  Although the USPTO had already stated this in a USPTO Board of Appeals (BPAI) decision, there was some tension between the BPAI decision and a prior, predecessor Court decision, the so-called “Hilmer doctrine.”  In the Hilmer doctrine, when a US patent application claimed priority of a foreign application, the filing date of the foreign patent application was useful only in defending against references asserted against the application. That is, in arguing against a reference asserted against the application or the patent obtained from the application, the reference had to have an effective date prior to the filing date of the foreign patent application.  But when the US patent resulting from the foreign patent application was used as a reference against another application, the effective reference date was the date of the filing of the US application, not the filing date of the foreign patent application.  This is usually referred to as the filing date of the foreign patent application being a “shield, not a sword.” This CAFC decision effectively states that the Hilmer doctrine does not apply to US patent applications claiming priority of a provisional patent application.  When the patent resulting from the application claiming priority of the provisional patent application or the published patent application is used as a reference against another application or patent, the filing date of the provisional patent application is the effective date of the reference.  Consequently, the filing date of the provisional patent application is both a shield and a sword.

In Telcordia Technologies v. Cisco Systems, the CAFC considered both claim construction and damages.  Telcordia had asserted three patents against Cisco: the ‘306 patent, the ‘763 patent and the ‘633 patent.  The District Court found that Cisco did not infringe the ‘306 patent, and due to this finding, the district court did not consider the validity of the ‘306 patent.  The CAFC did find that the District Court had erred in the claim construction of the ‘306 patent, but that the error did not affect the finding of non-infringement; however, the CAFC remanded back to the District Court to consider validity of the ‘306 patent.  The opinion includes a good discussion of the separateness between the invalidity claim brought under declaratory judgment and the infringement claim.  In regards to the ‘763 patent, the opinion also includes a good discussion of definiteness in means- plus-function claims.  Finally, the opinion is a good example of the complexity of damage calculations.

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