Federal Circuit

August 2017 Patent Prosecution Update

August 28, 2017

The August 2017 patent prosecution lunch featured a discussion of the recent United States Patent and Trademark Office (USPTO) report concerning patentable subject matter. In addition, the availability of Computer Based Training (CBT) for e-Petitions was highlighted. A summary of a recent case concerning the broadest reasonable interpretation standard for means-plus-function limitations (IPCom v. HTC) was presented. Recent updates for Brazil’s proposed extraordinary solution for its patent application backlog problem and Canada’s promise doctrine were provided. Download the presentation here.

March 2017 Patent Prosecution Update

March 17, 2017

The March 2017 patent prosecution lunch featured a discussion of a recent change to the deadline for requesting examination for a patent application in the United Kingdom (UK). In addition, a recent Federal Circuit case, Phigenix, Inc. v. ImmunoGen, in which the Federal Circuit held that a petitioner lacked standing to an appeal an adverse final decision in an Inter Partes Review (IPR) was covered. A summary of a recent case concerning obviousness (In re van Os), which requires an examiner to provide a rationale behind a conclusion that a particular combination would have been “intuitive” in an obviousness rejection, was provided. The presentation may be downloaded here.

Software Patentability v. A Review of 2016 Federal Circuit Opinions

January 19, 2017

The January patent prosecution practice luncheon included a discussion of highlights from 2016 Federal Circuit opinions that addressed the patentability of software inventions. Although the Federal Circuit continued its trend of invalidating most of the software patents it reviewed, several cases offered software patent holders new cause for optimism. The presentation can be downloaded here.

New Rules May Alter Patent Litigation

March 31, 2016

On December 1, 2015, new amendment to the Federal Rules of Civil Procedure went into effect. For intellectual property practice, the most significant change may be the elimination of the “Forms” section of the rules and Rule 84. Previously, pleadings similar to Form 18 for direct patent infringement were sufficient to satisfy the pleading standards in federal court. Now, based on previous decisions of the Federal Circuit regarding indirect infringement, commentators suggest that patent complaints will need to provide more specific factual information in order to survive early motion practice. The Federal Circuit has not yet addressed this question, but early district court decisions appear to be applying the amendments inconsistently. Some decisions have ruled that more specific fact-based allegations are required, while others have noted that the Advisory Committee comments state that the amendments were not intended to alter existing pleading standards and therefore continue to use Form 18 as the benchmark.

Although an initial complaint is one of the first steps in a patent lawsuit, it has significant procedural and substantive consequences depending on how it is drafted. Pending bills in the current Congress, the Innovation Act (H.R. 9) and the PATENT Act (S. 1137), would change patent infringement pleading requirements by amending the patent statutes in Title 35 of the United States Code.

Additional changes to the Rules relate to the scope of discovery (Rule 26), timing and objections relating to requests for production or inspection (Rule 34), and sanctions relating to electronically-stored information or “ESI” (Rule 37). Download the presentation from here.

Federal Circuit Finds the Disparagement Provision of the Lanham Act Unconstitutional

February 29, 2016

This presentation provides information concerning the recent In re Tam case in which the Federal Circuit held that the disparagement provision of §2(a) of the Lanham Act is unconstitutional because it violates the First Amendment right of free speech. It also discusses the impact of this holding on the currently pending Redskins case. A copy of the presentation can be downloaded here.

Federal Circuit Clarifies Response Requirements for an Indefiniteness Rejection

May 7, 2014

The Federal Circuit recently released its opinion for the case In re Packard, providing guidance as to when the United States Patent and Trademark Office (USPTO) may properly reject a claim as failing to meet the definiteness requirements of 35 U.S.C. § 112. The patent at issue in the case was rejected because the examiner determined that several claim limitations lacked antecedent basis or were otherwise unclear. The court held that the when the USPTO has made a well-grounded rejection that clearly identifies the language in a claim that is ambiguous or unclear, it may properly reject the claim as failing to meet the requirements of § 112 if the applicant does not offer a satisfactory response.

In upholding the rejection of the patent in suit, the Federal Circuit found that Mr. Packard’s response to the § 112 rejection was inadequate for several reasons. The response did not address all of the § 112 issues presented by the examiner. For the issues that were addressed, the response only offered an explanation of the written description and the figures and did not discuss the claim language. The response also failed to propose amendments to clarify the claim language or make arguments to show why the existing claim language was not indefinite.

In addition to stating why Packard’s offered response was inadequate, the Federal Circuit also provided guidance as to what it considers to be a satisfactory response. A satisfactory response should include either a modification of the language regarded as unclear, a separate definition of the unclear language, or an explanation of why the language is not actually unclear.

Patent Infringement by the U.S. Government under § 1498

November 19, 2012

What should you do if the U.S. Government infringes your patent?  Under 28 U.S.C. §1498, whenever the government uses or manufactures a invention covered by a patent of the United Stated, without a license from the owner, the owner may only bring an action against the United States in the United States Court of Federal Claims.  The section serves both as an express waiver of the government’s immunity and an assumption of liability by the government for any direct liability attributable to any contractor, so long as they acted with the government’s authorization or consent.  Often times, a close review of the contract will be required in order to determine if the contractor in fact had the government’s consent to undertake the act which resulted in the infringement.

As a result, a qualifying government contractor enjoys, as an affirmative defense, immunity from any claim of patent infringement based upon goods produced “for the government.”  However, many government contracts provide for indemnification of the government by the contractor for patent infringement.  Therefore, in these instances, while statutorily the liability falls upon the government and the forum is fixed, the contractual relationship between the government and the contractor may ultimately see the contractor being liable and/or forced to defend the action.

The scope of §1498 was recently reconsidered, en banc, by the Federal Circuit in the context of carbon fiber panels which were partially manufactured abroad only to be imported and finished in the United States.  The Federal Circuit reversed its prior holding and found that §1498 did apply to the importation of a product made by a patented process.  In so holding, the court clarified that the correct interpretation of 1498(a) is that it creates a cause of action for direct infringement that is separate and different from 271(a), and that it could include conduct falling under 271(g). See Zoltek Corporation v. United States (Fed. Cir. 2012).