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CAFC Weekly: April 29, 2011

by Orlando Lopez

The precedential patent-related opinions of this week include a personal jurisdiction opinion, a false marking opinion, an opinion utilizing the best mode requirement to invalidate a patent, and an opinion in which two patents are invalidated – one for lack of written description and the other for anticipation.

Although in Radio Systems Corp. v. Accession, Inc, the CAFC considered the dismissal of a declaratory judgment action due to lack of personal jurisdiction, the opinion has received more attention for the fact that the attorney for Accession contacted the USPTO and provided prior art that was used against the patent application by Radio Systems. Accession is a New Jersey corporation and Radio Systems has their principal place of business in Tennessee. Accession owns a patent for a portable, pet-access door that can be inserted into sliding glass doors.  Radio Systems manufactures pet related products.  Mr. Sullivan, Accession’s president and only employee, had contacted Radio Systems attempting to establish cooperation in bringing a product to market based on the Accession patent.  Radio systems had applied for a patent on a related device and obtained a notice of allowance.  The attorney for Accession contacted the USPTO and provided the examiner with information on the Accession patent, resulting in the USPTO withdrawing the notice of allowance.  Finally, the attorney for Accession sent letters to Radio Systems outlining an alleged infringement of the patent, but suggesting that the dispute be settled through licensing.  Radio Systems filed for declaratory judgment of non-infringement and invalidity in District Court in Tennessee.  The District Court granted Accession’s motion for dismissal due to lack of personal jurisdiction.  Radio Systems appealed to the CAFC, which upheld the decision of the District Court.  Although the CAFC did not comment on the submission of prior art to the USPTO by Accession’s attorney, if the application was published, such a submission is almost within the rules.  The patent rules, according to 37 CFR 1.99, allows submission of prior art in a published application, but not after the notice of allowance.  If the application had not been published, the statute, 35 USC 122, requires that the application be kept in confidence; however, under the proposed Patent Reform Act, third parties can submit prior art and there would not be much question about the above described circumstances .

In Juniper Networks v. Shipley, the CAFC upheld the dismissal of a false marking suit brought by Juniper Networks against Shipley, an individual, for failure to state a claim.  Juniper Networks makes and sells computer networking products.  Shipley is an alleged “hacker” that maintains a website for the “hacker community.” Shipley also filed for and obtained two patents for a “dynamic firewall.” In the “Current Projects” page of his website, Shipley named the dynamic firewall as being patented.  The present owner of the two patents for the “dynamic firewall” sued Juniper Networks for infringement.  In the discovery phase of the infringement suit, Juniper allegedly learned that a version of the dynamic firewall operated on Shipley’s home computer starting in 1996 and was used in the website.  Additionally, in 1999 the version of the dynamic firewall was allegedly destroyed in a disk crash and was not re-created. Juniper then brought suit for false marking in District Court.  The District Court allowed a motion by Shipley to dismiss for failure to state a claim and allowed Juniper to revise the complaint.  Juniper filed the amended complaint alleging that Shipley falsely marked the website, any firewall or other security products operating on the website, as well as the web pages.  Holding that Juniper had not provided facts that indicated that Shipley had marked an “unpatented article,” the District Court dismissed Juniper’s suit without leave to amend the complaint.  Juniper appealed to the CAFC, which upheld the District Court’s decision.

In Wellman Inc. v. Eastman Chemical Co., Wellman owns two patents related to “slow crystallizing” PET resins used in plastic beverage containers and sued Eastman for infringement.  At the time Wellman filed the first application, it had commercialized a slow crystallizing PET resin, which it referred to as Ti818.  Waldman did not disclose the recipe for Ti818 in the patent application and the ranges of concentrations of ingredients provided in the patent application either did not include the concentrations used in Ti818, or the preferred concentration was not the concentration used in Ti818.

The Wellman patents also disclosed optional heat-up rate additives (“HUR”) for their PET resin.  Spinels are disclosed in the patent application, as the most preferred HUR additives and carbon black is described as a suitable additive. Ti818 includes an HUR additive called N990, a specific type of carbon black with a 290 nm particles size.  At trial, based on the testimony of one of the inventors, the District Court found that Wellman sought to maintain the use of N990 as a trade secret.  The District Court granted Eastman’s motion for summary judgment of invalidity for failure to disclose the best mode. The CAFC upheld the decision of the District Court.

In Billups-Rothenberg, Inc. v. Associated Regional and University Pathologists, Inc., Billups owns patents for a genetic test for an iron disorder, hemochromatosis, and sued Associated Regional and University Pathologists, Inc. (“ARUP”) and Bio-Rad Laboratories, Inc. (“Bio-Rad”) for infringement.  Billups asked the District Court for summary judgment of infringement and the defendants requested summary judgment of invalidity.  The District Court denied Billups’ motion and granted a summary judgment of invalidity.  Billups appealed to the CAFC.  The CAFC found that, in the first of the two patents in question, although Billups claimed methods of detecting mutationsresponsible for hemochromatosis, they did not identify any disease-causing mutations in the specification.  The CAFC found that that the first of the two patents was invalid due to lack of sufficient written description (the standard of written description being that one skilled in the art will recognize that the applicants were in possession of the invention).  In the period of time between the first and second Billups’ patents, researchers were able to identify and disclose the genetic sequence of three mutations responsible for hemochromatosis, and a patent assigned to Bio-Rad was issued for those three mutations and tests utilizing them.  The CAFC found that the second Billups’ patent was anticipated by the prior patent disclosing the genetic sequence of the three mutations.

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One Response to “CAFC Weekly: April 29, 2011”

  1. Celia Anhalt says:

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