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Patent Group Luncheon April 2011
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Topics covered in this month's patent prosecution presentation include recent case law from the U.S. Court of Appeals for the Federal Circuit (CAFC) dealing with reissue applications and dependent …

Topics covered in this month's patent prosecution presentation include recent case law from the U.S. Court of Appeals for the Federal Circuit (CAFC) dealing with reissue applications and dependent claims. A brief overview of the arguments being presented in the Microsoft v. i4i case is also reviewed. Oral arguments in this case were recently heard by the United States Supreme Court. Case law developments dealing with written description for mechanical cases is also addressed. Finally, an overview on the breakdown of patent applications filed in Europe in 2010 is presented.

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  • 1. Prosecution Group Luncheon Patents April, 2011
  • 2. In re Tanaka (CAFC 2011)
    • BPAI: reissue improper if only asserted defect is failure to present additional dependent claims
    • FC reversed
      • Patent must be “ wholly or partly inoperative or invalid ”
      • Defective patent must have arisen “ through error without deceptive intent ”
  • 3. In re Tanaka (CAFC 2011)
    • “ Wholly or partly inoperative or invalid ”
      • Additional dependent claims are a hedge against invalidity of broader claims (In re Handel , Rich, J. )
      • Handel involved a known potential prior use
    • “ Error without deceptive intent ” not disputed
    • FC rejects argument that relevant discussion in Handel is dicta, notes adherence in intervening cases
  • 4. Microsoft v. i4i Arguments
    • Oral argument heard this week
    • Challenges clear and convincing standard for overcoming statutory presumption of patent validity (35 U.S.C. § 282) 
    • Eight justices are hearing case (Roberts recused); decision expected by end of June 
  • 5. Microsoft v. i4i Arguments--Highlights
    • Microsoft: validity presumption “seems much diminished” if art not considered by PTO ( KSR )
      • Relaxed standard should apply in all validity-challenge cases
    • Court interested in state of law and congressional intent in 1952
      • Radio Corporation of America, 293 U.S. 1 (1934) (Cardozo, J.)
      • Challenger “bears a heavy burden of persuasion”; presumption cannot be overcome “except by clear and cogent evidence”
    • From RCA , i4i argued Congress codified existing presumption in § 282, so clear and convincing is the right standard
    • Microsoft: law on validity presumption “all over the map” in 1952
      • Some courts did not recognize any such presumption, much less one only overcome by clear and convincing evidence
      • RCA language was dicta, distinguishable because RCA involved a question of priority of invention, not validity 
  • 6. Microsoft v. i4i Arguments--Highlights
    • i4i, U.S.: Congress has made no attempt to change the standard
    • Court: other possible solutions?
      • Careful jury instructions, e.g. clear and convincing evidence needed, burden more easily satisfied with art PTO did not consider
    • Why should presumption of validity apply if art was not considered?
      • Validity challenge is “collateral attack” on governmental decision
      • Preclusive effect of erroneous invalidation ( Blonder Tongue )
      • Reliance on issuance of patents by owners, investors, licensees
      • “ [F]ar from black and white what the PTO does or doesn’t consider”; rejecting standard would marginalize PTO
    • Breyer: reasons emphasize importance of patents, disaster of invalidation; maybe a “worse disaster for the country is to have protection given to things that don’t deserve it”
  • 7. Written Description in Mechanical Context
    • Crown Pkg’g Tech., Inc. v. Ball Metal Beverage Container Corp. (FC 2011)
    • Q: Do written description rules in biotech cases (e.g. Ariad ) apply in other technological fields?
    • Reverses trial court invalidity finding
    • Confirms that “problem-solution” approach re: written description ( Revolution Eyewear ) is alive
  • 8. Written Description in Mechanical Context
    • Can end, reduces waste when seaming end to body
      • Problem solved (1) by changing the angle of portion of the inside wall, and (2) by reducing width of bead
      • Also discloses tool-part that resolves mechanical issues
    • Court: claims can address one or more problems, WD satisfied if “description conveys that the inventor was in possession of the invention recited”
      • Two separate, clearly described solutions for improving metal usage were present
      • Relatedness of described solutions is not an issue
      • Distinguished enablement from written description 
    • Spec. did not mandate that problems must always be solved together
  • 9. EP Applications Hit All-Time High
    • 235,000 European patent filings in 2010
    • EPO: "after a 2-year slump, the EU and US are nearly back to their levels of patenting before the crisis“
    • Europe: over 33%
    • U.S.: 26%
    • Japan: 18%