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Archive for the ‘CAFC Weekly’ Category

CAFC Weekly: Week of July 22, 2011

by Orlando Lopez

There were no precedential patent-related opinions during the preceding week; however, two precedential patent-related opinions were handed down this week.  One opinion related to prosecution history estoppel (the affect of arguments during prosecution of the patent application) and the doctrine of equivalents, and the other related to the rules governing the argument of dependent claims in an appeal before the USPTO Board of Patent Appeals And Interferences (BPAI).

In Duramed Pharmaceuticals Inc. v. Paddock Laboratories Inc., Duramed owns a patent for a formulation for estrogen that includes a moisture barrier coating, where the formulation is used in hormone replacement therapy.  During prosecution of the application, responding to a rejection, Duramed amended claim 1 to recite a specific moisture barrier coating and the application was allowed.  Subsequently, Duramed filed suit against Paddock, alleging infringement of the patent for the estrogen formulation.  The suit was based on Paddock’s Abbreviated New Drug Application (ANDA) for a generic version of a hormone replacement therapy product utilizing a moisture barrier coating which was different from the specific one recited in Duramed’s claim 1.  The District Court granted Paddock’s motion for summary judgment of non-infringement, holding that Duramed’s amendment to claim 1 estopped Duramed from claiming infringement based on the doctrine of equivalents.  Duramed appealed to the CAFC, which upheld the judgment of the District Court.  Duramed’s argument on appeal was based on the fact that the equivalent moisture barrier coating used by Paddock was not foreseeable at the time the amendment was entered.  The issue was whether, in order to be foreseeable, the barrier coating used by Paddock had to be known, at the time when Duramed made the amendment, as a barrier coating for use with estrogens rather than as a barrier coating for use in the field of pharmaceutical compositions.  The CAFC held that foreseeability does not require that degree of precision in the knowledge of how to apply the known characteristic. The decision continues to clarify the effects of the Supreme Court decision in Festo. Read the rest of this entry »

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CAFC Weekly: Week of May 7, 2011

by Orlando Lopez

There was only one precedential patent related opinion this week, an opinion related to reissue applications.

In the opinion, In re Mostafazadeh, Mostafazadeh and Scott are the inventors of U.S. Patent Number 6,034,423 (“the ’423 patent”), which issued in 2000, and relates to semiconductor packaging.  During prosecution, the claims were amended to include an additional limitation, “circular attachment pads,” in order to distinguish the claims from the prior art.  In 2001, the inventors filed a reissue application amending the additional limitation to “attachment pads.” The examiner rejected the reissue application, since the amendment was considered as an attempt to recapture subject matter surrendered during prosecution. The inventors appealed to the Board of Patent appeals and Interferences (BPAI), and the BPAI upheld the rejection.  The inventors then appealed to the CAFC, which upheld the BPAI decision.  The opinion discusses the possible recapture of subject matter surrendered during prosecution.  As such, the opinion should be of interest to those pursuing reissue applications.

 

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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.  Read the rest of this entry »

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CAFC Weekly: April 22, 2011

by Orlando Lopez

The precedential patent-related opinions of this week include: one en banc opinion related to contempt hearings when a party makes redesign modifications to a product subject to an injunction; one opinion regarding claim interpretation; and, one opinion regarding contract interpretation and indefiniteness of claims.

In Tivo Inc. v. Echostar Corp., the CAFC reviewed a prior decision en banc, in order to “address the circumstances under which a finding of contempt by a district court would be proper as to infringement by newly accused products.” Tivo owns a patent for DRT hardware and software and sued Echostar for infringement.  At District Court, Echostar was found to be infringing and the Court issued a permanent injunction ordering Echostar to stop making and selling the infringing receivers, as well as to disable the infringing functionality in existing receivers. Read the rest of this entry »

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CAFC Weekly: April 15, 2011

by Orlando Lopez

There were two precedential patent-related decisions this week. One related to joint infringement and another related to reissue applications.

In McKesson Technologies Inc. v. Epic Systems Corp, McKesson owns a patent for a system that allows patients to access visit-related content online following a doctor’s visit, and sued Epic for inducing infringement of the method claims by licensing software to healthcare providers who provide the software to their patients.  The claims were written as such that it required several parties, patients and providers, to perform the steps of the claims.  Read the rest of this entry »

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