FEBRUARY 2 0 0 0 Last The Federal Circuit month at M ont h at a Glance SEEDS AND PLANTS GROWN FROM SEEDS ARE PATENTABLE SUBJ ECT M ATTER Other plant protection acts do not exclude plants from statutory subject matter of 35 U.S.C. § 101. Pioneer Hi-Bred Int’l, Inc. v. J .E .M. Ag Supply, Inc. , No. 99-1035 (Fed. Cir. J an. 19, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . .1 ON-SALE BAR “DISPENSES” WITH CAULK DISPENSER PATENT Summary judgment of invalidity affirmed where accused product was offered for sale prior to the critical date of the patent. Vanmoor v. Wal-Mart, Inc. , No. 99-1190 (Fed. Cir. J an. 10, 2000) . . . . . . . . . . . . . . . . . . . . . . . . .1 ATTORNEY FEES AWARDED WHERE NO BASIS FOR SUIT Federal Circuit awards attorney fees to accused infringer even though owner company paid part of defense. Automated Bus. Cos. v. NE C Am., Inc. , No. 99-1316 (Fed. Cir. J an. 28, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 COURT “CLUBS” SECTION 146 APPELLANT Live testimony on all matters before the Board in a section 146 action makes a fact finder of district court and requires a de novo trial. Winner Int’l Royalty Corp. v. Wang , No. 98-1553 (Fed. Cir. J an. 27, 2000) . . . . . . . .3 Washington, DC 202-408-4000 NO NEED TO CORROBORATE CORROBORATING EVIDENCE OF INVENTORSHIP District court failed to properly credit alleged inventor’s corroborating evi- Palo Alto 650-849-6600 dence. Summary judgment against inventorship vacated. Virginia E lec. & Lighting Corp. v. National Serv. Indus., Inc. , No. 99-1226 (Fed. Cir. J an. 6, 2000) (nonprecedential decision) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4 Atlanta 404-653-6400 COURT M UST CONSTRUE CLAIM S BEFORE FACT FINDER CONSIDERS INFRINGEM ENT Finding of willful infringement and treble damages vacated because district Tokyo 011-813-3431-6943 court erred in submitting the issue of infringement to the jury without first construing the claim language. Rivera-Davila v. Asset Conservation, Inc. , No. 98-1075 (Fed. Cir. J an. 12, 2000) (nonprecedential decision) . . . . . . . . . . . .5 Brussels 011-322-646-0353 PROSECUTION HISTORY ESTOPPEL LIM ITS “STRETCH” OF WAISTBAND PATENT Claim scope limited by specification and prosecution history estoppel. NFA Corp. v. Asheboro E lastics Corp. , No. 98-1579 (Fed. Cir. J an. 5, 2000) (nonprecedential decision) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 EDITED BY VINCE KOVALICK This publication brings you a synopsis of patent cases decided last month by the United States Court of Appeals for the Federal Circuit based on slip opinions received from the court. You can review and download the full text of each opinion by visiting our Web site ( www.finnegan.com ).
L A ST M O N T H A T T H E F E D E R A L C I R C U I T Seeds and Plants Grown from The district court also did not discern any historical basis for the exclusion of seed-grown Seeds Are Patentable Subject plants from the scope of § 101. In Matter Chakrabarty , the Supreme Court explained that plants had not been previously deemed E lizabeth A. Hurley patentable because they are products of nature, and they could not be described with [J udges: Newman (author), M ayer and sufficient precision to satisfy the written Lourie] description requirement of the patent statute. Now, however, the district court reasoned, In Pioneer Hi-Bred International, Inc. v. plants can be modified by technology so they J .E .M. Ag Supply, Inc. , No. 99-1035 (Fed. Cir. are not solely products of nature. In addition, J an. 19, 2000), on interlocutory appeal of the impediments to fulfilling the written descrip- denial of summary judgment (“ SJ ” ), the tion requirement have been lessened by the Federal Circuit affirmed the district court’s rul- implementation of rules authorizing the ing that seeds and plants grown from seeds deposit of new species in publicly available are patentable subject matter. depositories, as well as advances in botanical Pioneer Hi-Bred International, Inc. understanding and analysis. (“ Pioneer” ) sued Defendants for infringement On appeal, J EM argued that 35 U.S.C. as a 01 page of certain patents directed to plants and seeds general statute must give way to a specific for new varieties of hybrid and inbred corn. one, such as the PVP A. The Federal Circuit Defendants, J .E.M. Ag Supply, Inc. (“ J EM” ), agreed with the district court, however, that moved for SJ , arguing that seeds and seed- all of the statutes protecting plants could be grown plants do not constitute patentable read in harmony and that the PVP A did not subject matter under 35 U.S.C. § 101. effect an exclusion of new plant varieties from The district court held that under the § 101. Supreme Court’s decision in Diamond v. The Federal Circuit also agreed with the Chakrabarty , 447 U.S. 303, 309 (1980), there district court’s observation that any conflict is no basis in law for excluding living things between Title 35 and the PVP A is simply the such as seeds and plants from the subject mat- difference in the rights and obligations ter included in § 101. J EM argued that imposed by the two statutes, and that more Chakrabarty does not apply to plants, because than one statute can apply to a property inter- plants were intended to be excluded from the est; the fact that laws are of different scope patent system, as evidenced by the enactment does not invalidate those laws. of other statutes that provide protection to plants, such as the Plant Variety Protection Act (“ PVP A” ), 7 U.S.C. § 2321 et seq. The PVP A, which does not include an extensive examina- tion system and is administered by the On-Sale Bar “Dispenses” with Department of Agriculture, was enacted in Caulk Dispenser Patent 1970 as a form of protection for new varieties of seed-grown plants. Brian M. Burn The district court observed that the Patent & Trademark Office (“ PTO” ) has been [J udges: M ayer (author), Archer, and granting patent protection to new and unob- Rader] vious varieties of seed plants for at least fifteen years, and that the Board of Patent Appeals In Vanmoor v. Wal-Mart, Inc. , No. 99-1190 and Interferences had rejected J EM’s argument (Fed. Cir. J an. 10, 2000), the Federal Circuit that plant-specific acts such as the PVP A are affirmed the district court’s summary judg- the exclusive forms of protection for plant life ment (“ SJ ” ) of invalidity, finding the asserted covered by those acts. In re Hibberd , 227 patent invalid as having been on sale prior to U.S.P .Q. 443 (Bd. Pat. App. & Int. 1985). L L P . FI N N EG A N H EN D ERSO N FA RA B O W G A RRET T D U N N ER
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