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CAFC Weekly: April 1, 2011

by Orlando Lopez

The precedential opinions of this week relate to satisfying the written description requirement in patents for the mechanical arts and to the requirements for the Examiner’ s pima facie case of obviousness. An order sanctioning attorneys rounds up the week.

In Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corporation, Crown owns two patents where the specification discloses two ways to save metal when joining can bodies and can ends, the lids placed on top of the can bodies. Crown sued Ball for infringement of those two patents. The District court granted summary judgment of invalidity due to lack of written description and for anticipation by a Japanese patent application. Crown appealed to the CAFC. Relying on a prior decision (Revolution Eyewear Inc. v. Aspex Eyewear Inc.), the CAFC reversed the summary judgment of invalidity to lack of written description. In Revolution Eyewear, the CAFC held that “[i]nventors can frame their claims to address one problem or several, and the written description requirement will be satisfied as to each claim” as long as the specification conveys to others possession of the claimed invention, even if the two problems are related. Because there were conflicting views in the expert reports relating to whether the Japanese patent application anticipated the claims, the CAFC reversed the summary judgment of invalidity. This opinion is a good example of the determination of sufficiency of written description in patents related to the mechanical arts.

In the other precedential opinion of this week, In re Jung, the claims in the patent application filed by Jung and Lowell Woods were rejected as obvious and the Board of Patent Appeals and Interferences (BPAI) upheld the rejection. Jung appealed to the CAFC and the CAFC upheld the BPAI decision. The CAFC stated that the Examiner is not required to present a claim interpretation (claim construction). The opinion, and Jung’s arguments, present an example of what not to do during patent prosecution.

This week also included an order, In re Violation of Rule 28(d), sanctioning attorneys for excessive confidential markings in appeal briefs.

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