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April 25, 2012


In Zapmedia v. Apple, Zapmedia tried to backpedal from prosecution estoppel (to overcome prior art) in the family of the asserted patent: 7,343,414. Apple's law firm set up solid arugments of claim construction and non-infringment that the courts easily agreed with. (CAFC 2011-1546): See TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1371 (Fed. Cir. 2008) ("[P]rosecution history of a related patent application may inform construction of a claim term, when the two applications are directed to the same subject matter and a clear disavowal or disclaimer is made during prosecution of the related application.").

Posted by Patent Hawk at 8:46 PM | Claim Construction

April 23, 2012


Landmark Screens v. Morgan, Lewis & Bockius and Thomas D. Kohler tells of a sorry tale of alleged negligence, malpractice and fraud in a patent prosecution. The California state court was biased against Landmark, the company which had its patent filing ruined. Case dismissed. Landmark then sought recourse in federal district court, which tossed the case under pretext of statute of limitations. On appeal, the CAFC decided they had subject matter jurisdiction, even though admittedly "a fraud action, governed by state law, not patent law or patent practice."

Posted by Patent Hawk at 4:49 PM | Case Law

April 19, 2012


In re Mousa, a chemical compound prosecution, the CAFC affirmed anticipation by inherency. "[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citations omitted). Applicant failed to prove what could not be proven - that the PTO's unsubstantiated conjecture was wrong. Rejection without direct evidence was copasetic (inherent redox reaction), but "appellant's unsupported statements... are not sufficient evidence to rebut the examiner's contention." In re Hoke, 560 F.2d 436, 438 (C.C.P.A. 1977).

Posted by Patent Hawk at 3:12 PM | Prior Art

April 18, 2012

Drug Abuse

In Caraco v. Novo, a unanimous Supreme Court reversed the CAFC on abuse of patent: "A generic manufacturer may employ the counterclaim provision to force correction of a use code that inaccurately describes the brand's patent as covering a particular method of using a drug. The brand submits misleading patent information to the FDA, delaying or blocking approval of a generic drug that infringes no patent and thus, under the statute,should go to market." The CAFC had found "that Caraco lacked 'a statutory basis to assert a counterclaim.'"

Posted by Patent Hawk at 2:31 PM | Case Law

April 9, 2012

French Fried

5,750,561 owner Aventis sued Hospira and Apotex for infringing the cancer drug concoction. Co-inventor Jean-Louis Fabre withheld references from the PTO during prosecution, and it caught up with him, and Aventis. "There simply is no justification for telling the [PTO] about the prior art disclosing the problem [Fabre] examined while concealing key prior art disclosing the solution he chose." Overcoming the high hurdle of inequitable conduct set in Therasense, '561 had terminal cancer before it was shot in the heart. The claims were also found obvious. Affirmed on appeal (CAFC 2011-1018).

Posted by Patent Hawk at 12:21 PM | Inequitable Conduct

No Access

5,875,435 claims an automated accounting system. '435 owner Noah Systems sued Intuit for infringement. Intuit got the litigation stayed pending reexam. Reexam by "the PTO confirmed the patentability of the original claims of the '435 patent and determined that new claims 19-56 were patentable." With litigation restarted, Intuit sold the district court on the illicit idea that the claimed "access means" were indefinite under §112 ¶2 "because the specification disclosed no algorithm by which the computer was programmed to perform the function asserted in the claims." By law, that failing would be written description, §112 ¶1. But the fix was in, and that was all that mattered. The district court ignored that the claimed "access means" referred to entering a passcode, which was well-documented in a figure and written description, as court documents showed. Affirmed on appeal. (CAFC 2011-1390). One more chip on a mountainous pile showing blatant patent court corruption favoring well-regarded companies over patent holders.

Posted by Patent Hawk at 11:37 AM | § 112

April 3, 2012

Foolish Fiber

In Advanced Fiber Technologies v. J&L Fiber Services, NY Senior Judge Lawrence E. Kahn had some senior moments during claim construction. Further innaity ensued on appeal. The CAFC went along with construing a term that was not in the claims, but in the district court's claim construction. "In those cases in which the correct construction of a claim term necessitates a derivative construction of a non-claim term, a court may perform the derivative construction in order to elucidate the claim's meaning." There was no such necessity, as the non-claim term in dispute inappropriately introduced a claim limitation that was not in the claims. Hal Wegner commented: "the court has once again demonstrated the difficulty if not impossibility of correctly predicting claim construction."

Posted by Patent Hawk at 6:29 PM | Claim Construction

April 2, 2012

Applying Natural Laws

The Supreme Court ruling in Mayo v. Prometheus was not a ruling based in law. To the contrary. By admission of the practicality of the claims, there was scant legal precedent to reach as far as SCOTUS did. The decision was instead a social policy decision - that society was better off not allowing monopolization of heath care treatments. From a legal standpoint, the CAFC got it right in following §101 that one "may obtain a patent," except for what has been prohibited. The Supreme Court expanding the scope of prohibition, that "a patent could not simply recite a law of nature and then add the instruction 'apply the law,'" is exactly what many patents do. All gene patents do that, as do plant patents, for that matter. By SCOTUS reasoning, any biological patent simply applies one or more laws to nature to achieve its effect. Even chemistry patents simply apply the law of nature regarding covalent or ionic bonds.

Continue reading "Applying Natural Laws"

Posted by Patent Hawk at 12:13 PM | § 101