FEBRUARY 2002 Last The Federal Circuit month at Month at a Glance HAS THE FEDERAL CIRCUIT “TORPEDOED” PLAIN MEANING AND PROSECUTION HISTORY SUBMARINE PATENTS? LIMIT LITERAL SCOPE OF CLAIM AND ESTOP Equitable doctrine of prosecution laches may be INFRINGEMENT applied to bar enforcement of patent claims that Patentees description that stressed critical claim have issued after an unreasonable and unexplained term and relied on that term to distinguish prior art estops infringement. Talbert Fuel Sys. Patents delay in prosecution, even though the applicant complied with pertinent statutes and rules. Symbol Co. v. Unocal Corp ., No. 99-1421 (Fed. Cir. Jan. 8, Techs., Inc. v. Lemelson Med., Educ. & Research 2002) ...................................................................6 Found., L.P. , No. 00-1583 (Fed. Cir. Jan. 24, 2002) ...................................................................1 FEDERAL CIRCUIT UPHOLDS PRELIMINARY INJUNCTION AGAINST DESIGNERS DISTRICT COURT EXCEEDED ITS AUTHORITY IN Minor refinements over patentees’ design concept SHORTENING THIRTY-MONTH STAY UNDER were not likely to constitute a separate invention; ANDA therefore, validity and infringement likely. District court has no authority in an infringement Hoop v. Hoop , No. 01-1288 (Fed. Cir. Jan. 30, action because of allegedly improper conduct 2002) ...................................................................7 before the FDA. Andrx Pharms., Inc. v. Biovail Corp. , No. 01-1650 (Fed. Cir. Jan. 17, 2002) ........1 EVIDENCE OF EXPERIMENTAL USE “SINKS” SUMMARY JUDGMENT OF INVALIDITY ON CLAIM LOSES ORDINARY MEANING DURING FLOATING DOCK PATENT PROSECUTION HISTORY Experimental use criteria are not at odds with the Where the prosecution history requires a claim “ready for patenting” prong of the Pfaff on-sale construction that excludes some but not all of the bar test. EZ Dock, Inc. v. Schafer Sys., Inc. , preferred embodiments, such a construction is No. 00-1443 (Fed. Cir. Jan. 15, 2002) ..................8 Washington, DC permissible and meets the standard of “highly 202-408-4000 persuasive evidentiary support.” Rheox, Inc. v. DISMISSAL WITHOUT PREJUDICE NOT AN Entact, Inc. , No. 01-1001 (Fed. Cir. Jan. 8, ABUSE OF DISCRETION 2002) ...................................................................2 Order dismissing a complaint and counterclaims is Palo Alto appealable by defendant as a final order, even “COMMON SENSE” AND “COMMON 650-849-6600 where the dismissal was without prejudice. H.R. KNOWLEDGE” ARE INSUFFICIENT TO UPHOLD Techs., Inc. v. Astechnologies, Inc. , No. 01-1121 OBVIOUSNESS REJECTION (Fed. Cir. Jan. 11, 2002) .......................................8 Board’s findings must extend to all material facts Atlanta and must be documented on the record, lest the 404-653-6400 RULE 11 PREFILING INVESTIGATION haze of so-called expertise acquire insulation from DETERMINED BY A REASONABLENESS accountability. In re Sang-Su Lee , No. 00-1158 STANDARD (Fed. Cir. Jan. 18, 2002) .......................................3 Cambridge Court reverses sanction of attorney fees, concluding 617-452-1600 that attorneys’ prefiling claim construction was not FAILURE TO COPY CLAIM WITHIN ONE YEAR OF frivolous. Antonious v. Spalding & Evenflo Cos. , No. PATENT GRANT BARS INTERFERENCE 01-1088 (Fed. Cir. Jan. 7, 2002) ...........................9 Claim added late to provoke interference included Tokyo material limitations different from the original 011-813-3431-6943 COURT VACATES AWARD OF PRIORITY IN claims. In re Berger , No. 01-1129 (Fed. Cir. Jan. 9, 2002) ........................................................4 INTERFERENCE PROCEEDING Board failed to properly consider evidence that senior party conceived of invention prior to junior COURT AFFIRMS ORDER REQUIRING GRADUATE Brussels STUDENT TO ASSIGN RIGHTS TO UNIVERSITY party’s reduction to practice and diligently pursued 011-322-646-0353 the invention from the time of junior party’s Student’s testimony as to facts concerning inven- tion lacks credibility given substantial contrary evi- reduction to practice through senior party’s filing date. Brown v. Barbacid , No. 00-1590 (Fed. Cir. dence. University of W. Va. v. VanVoorhies , No. 00-1440 (Fed. Cir. Jan. 30, 2002) ..................5 Jan. 11, 2002) ....................................................10 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 website at www.finnegan.com
Recommend
More recommend
