Prosecution Group Luncheon Patents

1. Prosecution Group LuncheonPatents July, 2011

2. Inequitable Conduct Post-Therasense • American Calcar, Inc. v. American Honda Motor Co. (FC 2011) • Inventors examined car navigation system having similar features • Background discussion of PA system left out user-interface aspect • FC: under “but-for” standard, materiality affirmed as to one patent • Re other patents: “withheld information may be material if it would have blocked patent issuance under the PTO's preponderance of the evidence standard, giving those patents' claims their broadest reasonable construction” • Remand to assess materiality under "but-for" test, to apply PTO evidentiary/claim scope standards • Remand on intent because determination relied on a sliding scale standard rejected in Therasense

3. Intramural Conflict in Claim Construction • Retractable Technologies v. Becton, Dickinson & Co. (FC 2011) • Majority: per Phillips, look at words of the claims, specification, prosecution history, relevant extrinsic evidence; “tether the claims to what the specifications indicate the inventor actually invented”  • Claim differentiation discussed • Background, summary, specification dictated a narrow construction • Concurrence • “Claims cannot go beyond the actual invention that entitles the inventor to a patent” • “[P]urposes for which [patents] exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more” • Dissent: “ordinary and customary meaning . . . [to one] of ordinary skill in the art at the time of the invention” • “Body” has no special, technical meaning here • Use “widely accepted meaning of commonly understood words” • “Strong presumption” from claim language that “body” does not include “one-piece” limitation unrebutted

4. HR 1249—America Invents Act • To Senate Judiciary Committee (6/28) • Sec. 18: Business Method Patent Review • Validity challenge available to those “sued for” or “charged with” infringement of the patent • “Covered business method patent”: “method or corresponding apparatus for . . . operations used in [relation to] a financial product or service, except that the term does not include patents for technological inventions” • For infringement suit on “a covered business method patent, an automated teller machine shall not be deemed to be a regular and established place of business” for venue

5. New Supreme Court Cases • Kappos v. Hyatt • In Sec. 145 action, can applicant present new evidence that could have been presented to PTO • Are decisions based on such new evidence de novo • FC (en banc): sided with applicant • Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S • Counterclaim by generic mfr. against brand-name mfr. re: overbroad description of claim scope sent to FDA • Petitioner argued that Hatch-Waxman allows for correction of misstatements of patent scope • FC: H-W only allows for deleting of improperly listed patents