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Prosecution Group Luncheon Patents. July, 2011. 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

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Prosecution group luncheon patents

Prosecution Group LuncheonPatents

July, 2011

Inequitable conduct post therasense
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

Intramural conflict in claim construction
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

Hr 1249 america invents act
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

New supreme court cases
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