October 20, 2011
In 2006, Streck sued Research & Diagnostic Systems for infringing 6,200,500, 6,221,668, and 6,399,388. R&D retorted with invalidity - that under 35 U.S.C §146, which is a civil action to resolve inventorship under the now-obsolete first-to-invent system, R&D earlier invented the claimed invention. The jury wasn't clearly convinced by R&D's interference defense. But the USPTO was, awarding inventorship to R&D in 2009. Streck then filed a §146 action in the same district court where it had won before. Assigned to the same judge, Streck won again. Affirmed on appeal (CAFC 2011-1045).
Posted by Patent Hawk at 6:37 PM | Interference
September 2, 2011
In prosecuting semiconductor memory patents, Eliyahou Harari et al have run into interferences, which is a oftentimes byzantine artifact of the U.S. "not-first-to-file" patent regime. Rather careless prosecution was partly overcome when the CAFC decided against the patent board's curmudgeonly take, that somewhat sloppy incorporation-by-reference wasn't so sloppy as to exclude necessary material to run afoul of the written description requirement; only partly overcome, because one set of claims bit dust for §112 ¶1 while the other scraped by. Which is to say that the USPTO getting something right is equivalent to a coin toss at best - totally random. Another oddity of corrosive case law cropped up in determining whether a claimed "a" was singular, plural, or both (it was singular this time, as it always should be). (CAFC 2010-1075-1076); precedential, so as to add more conundrum to case law.
Posted by Patent Hawk at 10:03 PM | Interference
August 24, 2011
Genetics Institute (GI) sued Novartis under 35 U.S.C. § 291, declaring an interference between Genetic's' 4,868,112 and Novartis' 6,228,620 and 6,060,447, to determine priority. All go to recombinant proteins, ostensibly to treat hemophilia with clotting blood. The point was to invalidate claims of Novartis' patents. The district court dismissed, holding that there was no interference, because the claimed subject matter didn't overlap. Genetics appealed.
Posted by Patent Hawk at 8:00 PM | Interference
September 7, 2010
Haruo Sugano et al got into an interference with David. V. Goeddel and Robert Crea over two gene patent applications. "The Board held that Sugano is entitled to the benefit of the filing date of its initial Japanese application, and awarded Sugano priority as to the counts of both interferences."
Posted by Patent Hawk at 11:25 AM | Interference
May 12, 2010
Mule Kick Trick
Interferences are the mule kick of the shambolic first-to-invent patent regime that only the U.S. clings to. In this episode, Jos Timmermans provoked an interference by copying claims into 11/085,744 from Jones J. Robertson's LED lighting patent 6,860,628. Timmermans had priority going back to a provisional of the parent application, and so was senior to Robertson. Robertson argued that the copied claims were invalid in light of § 112 ¶ 1, lack of written description. The patent Board ended up canceling Robertson's patent claims. The CAFC vacated and remanded because "the Board erred in construing Timmermans's claims in view of Timmermans's disclosure rather than Robertson's disclosure."
Posted by Patent Hawk at 11:16 PM | Interference
May 7, 2010
Rolls-Royce's 6,071,077 and United Technologies (UTC) reissue application 09/874,931 had a head-on collision in the PTO that bounced into court under 35 U.S.C. § 146. The patents go to fan blades used in jet aircraft. The lame-brained patent Board misconstrued claims (too broadly, naturally: "the Board interpreted the claim to embrace both a forward and rearward sweep angle"), and found an interference, ruling in favor of UTC. The district court reversed that, holding "that the inventions were patentably distinct and there was no interference-in-fact, resulting in a final judgment in favor of Rolls-Royce." UTC appealed.
Posted by Patent Hawk at 10:11 AM | Interference
April 20, 2010
09/310,880 (Harari) traced its priority date linage back to June 8, 1988. 5,828,601 (Hollmer) was filed December 1, 1993, with no antecedent. So how do these two get into an interference, and Harari's claim to invention draws the short straw? USPTO incompetence!
June 7, 2009
The American anachronism of patent interferences to determine priority often creates a mess when invoked. And so it was when Affymetrix concocted an interference against Agilent for a genetic analysis technique involving mixing fluids. The BPAI gave the prize to Affymetrix, after Agilent couldn't convince the Board that Affymatrix was playing fast and loose meeting the written description requirement. Agilent pursued it to district court and lost again, leaving the CAFC to clean up.
March 22, 2009
Last week's CAFC showdown over inventorship highlights the foolery of first-to-invent, an anachronism indulged in only by the U.S. All other countries in the world use a first-to-file priority system. The next-to-last to abandon first-to-invent was the Philippines. In this episode, Henkel battled Procter & Gamble over a dishwater detergent fizzie.
March 11, 2009
Up in Smoke
Robert Chapman (11/391,897) followed on the heels of Michael Casner (7,153,966) in his formulation for a synthetic opioid, oxycodone. In a USPTO interference, Casner knocked out the upstart Chapman on obviousness. On a spiteful appeal, Chapman tried comeuppance.
February 19, 2009
First to Fail
The great anachronism of the U.S. patent system arises with interferences, a natural outgrowth of making priority a mystery by having a first-to-invent regime, rather than the tidier first-to-file, adopted worldwide, everywhere but this backwater too proudly called "the good ole US of A." Herein, a priority date squabble over collapsible pet carriers that aren't patentable anyway, as KSR kicks them out of the doghouse and buries them in the graveyard.
Posted by Patent Hawk at 5:14 PM | Interference
May 14, 2007
Patent Board of Arrogance and Interferences
The USPTO Patent Board of Appeals and Interferences (BPAI) displayed its arrogance in an interference between two contestants for a patent relating to "methods of cutting veneer from logs of wood," namely, between Thomas Miller and Robert Brand. Not even bothering with developing a written record, BPAI just used its own judgment. Not the way business should be done, the appeals court said (CAFC 06-1419).
Posted by Patent Hawk at 5:37 PM | Interference
May 11, 2007
In battling Proctor & Gamble for a patent for dishwashing detergent tablets, Düsseldorf-based Henkel appealed an anachronism of U.S. patent law - an interference, an area of patent law so obscure that even the Patent Board of Appeals and Interfernces (BPAI) can't get it right. This little soap opera only stops when the U.S. adopts the more rational first-to-file regime - if you want a patent, file for one; whoever files first has priority.
Posted by Patent Hawk at 11:50 AM | Interference
February 7, 2007
The USPTO Board of Patent Appeals and Interferences (BPAI) last month laid out a rare precedental ruling regulating direct testimony conduct during patent interference cross-examinations. (Pevarello v. Lan, Patent Interference 105,394)
Posted by Patent Hawk at 12:00 AM | Interference
May 26, 2006
An interference occurred between 5,770,212 (Falkner) and 08/459,040 (Inglis), both with claims going to preparing a vaccine against poxvirus. The Patent Board of Appeals & Interferences (PBAI) ruled that Inglis was senior party; that is, Inglis deserved the earlier priority date. Falkner appealed (CAFC 05-1324).
Posted by Patent Hawk at 12:37 PM | Interference
February 2, 2006
First to Invent
The bizarre patent interference case of Brown v. Barbacid, going on now for over 10 years, with miles to go, vividly illustrates the difficulty with this country's first-to-invent rule. The brouhaha is over who invented an enzyme assay first, arguing over the adequacy of lab notebooks. Is this any way to decide date of invention? Only the U.S. thinks so. What's wrong with a simple patent filing date? Nothing, says the rest of the world.
Posted by Patent Hawk at 1:36 PM | Interference
August 14, 2005
Another first-to-invent catfight, but with some interesting insights into the written description requirement (§112 ¶1). The CAFC (03-1480) ruled in a patent interference appeal among Capon (appellant) v. Eshhar (cross-appellant) v. Dudas (PTO Director).
Posted by Patent Hawk at 7:14 PM | § 112
First to Invent In Play
Microsoft scooped Apple by five months in a patent application for music playlists related to Apple's current cash cow, iPOD. Here's the Washington Post on it.
Posted by Patent Hawk at 2:36 PM | Interference