DISCLOSURE IN PARENT APPLICATION SUPPORTED CLAIMS

Commonwealth Scientific And Industrial Research Organisation, v. Buffalo Technology (USA), Inc., [2007-1449] (September 19, 2008) [BRYSON, Lourie, Rader] The Federal Circuit affirmed summary judgment that the patent is not anticipated and was infringed, but reversed summary judgment of non-obviousness.
DISCUSSION: On the issue of anticipation, the Federal Circuit found that the issue of whether the preamble was a limitation was waived because before the district court the infringer only argued that the preamble language did not restrict the invention to outdoor use, rather that arguing that it was not a limitation at all. On the issue of obviousness, the Federal Circuit found that there were disputed issues of material fact about the reason to combine the references. The Federal Circuit reiterated that the reason to combine references could be found in the nature of the problem to be solved. LOF: On the issue of improper addition of new matter, the Federal Circuit stated that the question whether new matter has been added to an application is a question of fact. The Federal Circuit said that the fact that the USPTO has allowed an amendment without objection “is entitled to an especially weighty presumption of correctness” in a subsequent validity challenge based on the alleged introduction of new matter. Reviewing the application as a whole, the Federal Circuit concluded that there is enough material in the original disclosure to support the district court’s finding that the invention was in fact broader than systems operating only in the frequency range “in excess of 10 GHz.”