SEPTEMBER 2004 Last The Federal Circuit month at Month at a Glance POSTER PRESENTATION CONSTITUTES A HAIRBRUSH PRIOR ART INCLUDES “PRINTED PUBLICATION” TOOTHBRUSHES Distribution and indexing are not the only fac- Common sense must be considered in deter- tors to consider for printed publication; the key mining what prior art may be “analogous.” inquiry is whether the reference has been In re Bigio , No. 03-1358 (Fed. Cir. Aug. 24, made publicly accessible. In re Klopfenstein , 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 No. 03-1583 (Fed. Cir. Aug. 18, 2004) . . . .1 CLAIM BROADER THAN PREFERRED “DYING” PLANT APPLICATIONS EMBODIMENT RESUSCITATED Applicant’s choice to disclose only a single Nonenabling publication disclosing a plant embodiment does not mean that the patent variety plus foreign sales of the plant creates a clearly and unambiguously disavowed other bar under 35 U.S.C. § 102(b). In re Elsner , embodiments. Home Diagnostics, Inc. v. No. 03-1569 (Fed. Cir. Aug. 16, 2004) . . . .1 LifeScan , Inc. , No. 03-1370 (Fed. Cir. Aug. 31, 2004) . . . . . . . . . . . . . . . . . . . . . .7 COURT REINSTATES JURY VERDICT OF VALIDITY, MODIFIES CLAIM “OPERATIVELY CONNECTED” CONSTRUED Washington, DC CONSTRUCTION, AND REMANDS FOR TOO NARROWLY 202.408.4000 NEW TRIAL Contrasting nature of the axioms that (a) a Recognition of a need does not render claim must be read in view of the specification Atlanta, GA obvious the achievement that meets that and (b) a court may not read a limitation into a 404.653.6400 need. Cardiac Pacemakers, Inc. v. St. Jude claim from the specification presents the long- Med. Inc., No. 02-1532 (Fed. Cir. Aug. 31, standing difficulty in claim construction. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 Innova/Pure Water, Inc. v. Safari Water Cambridge, MA 617.452.1600 Filtration Sys., Inc. , No. 04-1097 (Fed. Cir. Aug. 11, 2004) . . . . . . . . . . . . . . . . . . . . . .8 ELEVENTH AMENDMENT BARS Palo Alto, CA CLAIM AGAINST STATE TO CORRECT 650.849.6600 INVENTORSHIP GENERAL AND CONCLUSORY TESTIMONY State University’s entrance into commercial DOES NOT SUFFICE AS SUBSTANTIAL Reston, VA arrangements and application for patent does EVIDENCE OF INVALIDITY 571.203.2700 not waive state’s Eleventh Amendment immu- Expert did not mention specific prior art refer- nity from federal suit for correction of inventor- ence after introducing it into evidence; there- ship. Xechem Int’l, Inc. v. Univ. of Tex., fore, jury’s verdict of invalidity cannot be Brussels + 32 2 646 0353 No. 03-1406 (Fed. Cir. Aug. 31, 2004) . . . .4 upheld. Koito Mfg. Co. v. Turn-Key-Tech, LLC , No. 03-1565 (Fed. Cir. Aug. 23, 2004) . . . .9 Taipei PARTIAL PROTEIN SEQUENCE DOES + 886 2 2712 7001 NOT PROVIDE SUFFICIENT WRITTEN NOTHING PRECLUDES A DISTRICT COURT DESCRIPTION FROM MAKING ADJUSTMENTS TO A CLAIM Appellants provided no evidence that the full CONSTRUCTION AS A TRIAL PROCEEDS Tokyo + 03 3431 6943 amino acid sequence of a protein can be Party’s failure to address ambiguity left in deduced from a partial sequence and the limit- district court’s claim construction during trial ed additional physical characteristics that they leads to affirmance of noninfringement. identified. In re Wallach , No. 03-1327 Power Mosfet Techs., L.L.C. v. Siemens AG , EDITED BY VINCE KOVALICK (Fed. Cir. Aug. 11, 2004) . . . . . . . . . . . . . .5 No. 03-1083 (Fed. Cir. Aug. 17, 2004) . . .10 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
L A S T M O N T H A T T H E F E D E R A L C I R C U I T Poster Presentation Constitutes ity notice, or otherwise alert viewers that they could not copy or disseminate the a “Printed Publication” information it contained. Appellants did not disseminate copies of the slides. Jeffrey C. Totten On appeal, Appellants argued that precedent required (1) distribution of [Judges: Prost (author), Michel, and copies or (2) indexing in a library or data- Schall] base for a reference to constitute a “print- ed publication.” The Federal Circuit reject- In In re Klopfenstein , No. 03-1583 (Fed. ed this assertion, noting that the key Cir. Aug. 18, 2004), the Federal Circuit inquiry is whether a reference has been affirmed a decision of the Board, which made “publicly accessible.” To make this upheld the PTO’s denial of Patent assessment, the Court analyzed (1) the Application Serial No. 09/699,950 (“the length of time Appellants displayed the ‘950 application”) because the applicants presentation, (2) the expertise of the target had described the invention in a printed audience, (3) the lack of reasonable expec- publication more than one year prior to tation that the audience would not copy applying for a patent. the displayed material, and (4) the relative Appellants filed the ‘950 application on page 01 ease of copying the displayed material. October 30, 2000, claiming methods of The Court stressed that Appellants dis- preparing foods containing extruded soy played their presentation for three days to cotyledon fiber (“SCF”), which lowers an audience including cereal chemists and serum cholesterol levels while raising HDL took no measures to protect the informa- cholesterol levels. In particular, the ‘950 tion it contained. Moreover, the slides application disclosed a double-extrusion contained easily understood bullet points, process, which enhanced SCF’s previously which a person of skill in the art could easi- known lowering effect on cholesterol lev- ly copy or remember. Given these factors, els. the Court affirmed the Board’s decision. In October 1998, two years before applying for a patent, Appellants presented the process subsequently claimed in the “Dying” Plant Applications ‘950 application to a meeting of the Resuscitated American Association of Cereal Chemists. During the meeting, Appellants displayed a copy of the presentation—which Robert F. Shaffer disclosed every limitation claimed in the application—on poster boards for two and [Judges: Lourie (author), Clevenger, and one-half days. Later that same year, they Bryson] displayed the same presentation, for less than a day, at an Agriculture Experiment In In re Elsner , No. 03-1569 (Fed. Cir. Station at Kansas State University. Aug. 16, 2004), the Federal Circuit vacated The presentation consisted of fourteen and remanded the Board’s decision reject- slides, including a cover page, an acknowl- ing applicants’ plant applications under edgement slide, and four slides presenting 35 U.S.C. § 102(b). The Board determined experimental data in graphical form. Of that Appellants’ published Plant Breeder’s the eight substantive slides in the presenta- Rights (“PBR”) applications anticipated tion, most contained information already their claims in view of the foreign sales of known by persons of skill in the art. The the claimed plants. The issue of first presentation did not contain a confidential- impression was whether evidence of the L L P . F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R
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