The document summarizes notes from the October 2014 Patent Prosecution Luncheon. It discusses China joining the Patent Document Exchange program and Korea joining the Cooperative Patent Classification system. The After Final Consideration Pilot Program has been extended through September 2015. A Federal Circuit case found inequitable conduct for failure to disclose relevant prior art documents. Another case determined that a claim amendment resulted in estoppel and no infringement under the doctrine of equivalents.

1. Patent Prosecution Luncheon
October 2014

2. Patent Document Exchange
• China now participating
in Patent Document
Exchange (PDX)
program.
– Effective October 8,
2014
• Solves foreign priority
document problem with
bypass continuation
originated in China

3. Cooperative Patent Classification
• Korea now joining the
Cooperative Patent
Classification (CPC)
system
– January 1, 2015
• Current CPC patent
offices
– US
– EPO
– KIPO

4. Other USPTO Notes
• The After Final Consideration Pilot Program
(AFCP) now extended to September 30, 2015
– File Request for AFCP- note new form
 (Form PTO/SB/434)
– File Response to Final Office Action
– Amendment to at least one independent claim
that does not broaden it
– Be available for an interview
• Revised Myriad/Mayo guidance expected
• FY 2014: 300,000+ utility patents issued

5. Am. Calcar v. Honda (Fed. Cir.)
• Inequitable conduct by failure to disclose
• Car navigation system, prior art discussed in
specification
• Not disclosed: photos, owner’s manual, how-to
guide written by inventor
• Twist: jury found not obvious, but judge find
material (burden of proof discrepancy)
• Newman, dissenting: all this came out in the
reexam, and claims survived, thus not
material.

6. Millipore v. Allpure (Fed. Cir.)
• “Removable, replaceable” ≠ disassembled unit
– No literal infringement
• Narrowing amendment?
• Seal with “a first end comprised of a bellows-shaped
part sealingly attached to said holder,
and a second end comprising a self-sealing
membrane portion … whereas the transfer
member… is removable for replacement
thereof [[after use]]…”
• YES. Estoppel presumed. No equivalents.

7. Robert Bosch v. Snap-On (Fed. Cir.)
• Means-plus-function? “program recognition device”
and “program loading device”
• “wherein… a program version… is queried and
recognized by means of the program recognition
device”
• No presumption, but §112(f) still invoked.
– Spec does not provide any structural description, all
functional
– Expert saying PHOSITA would understand is not enough.
• No structure = means+function
• Means+function + no structure = indefinite
• No structure = indefinite?

8. Compare Inventio (Fed. Cir. 2011)
• “modernizing device” not means+function
– “connected to an elevator control and computing
unit”
– Internal components of processor, signal
generator, converter, memory, signal receiver
shown
– Dependent claims to “input, output, and signal
receiver aspects”
• Robert Bosch v. Snap-On
– connects through diagnostic plug to vehicle
– not enough structure

9. Teva v. Sandoz (Supreme Court)
• “Whether a district court’s factual finding in support of
its construction of a patent claim term may be
reviewed de novo, as the Federal Circuit requires
(and as the panel explicitly did in this case), or only
for clear error, as Federal Rule of Civil Procedure
52(a) requires.”
• Argument yesterday. Transcript inconclusive but
suggests split opinion. Struggle to draw lines.
• Kagan: “So what you're saying is that in certain cases
the factual finding truly is the legal determination, but
that in other cases, other matters can come in to
drive a wedge between the two.”

10. Teva v. Sandoz (Supreme Court)
• “Whether a district court’s factual finding in support of
its construction of a patent claim term may be
reviewed de novo, as the Federal Circuit requires
(and as the panel explicitly did in this case), or only
for clear error, as Federal Rule of Civil Procedure
52(a) requires.”
• Argument yesterday. Transcript inconclusive but
suggests split opinion. Struggle to draw lines.
• Kagan: “So what you're saying is that in certain cases
the factual finding truly is the legal determination, but
that in other cases, other matters can come in to
drive a wedge between the two.”