Petitioner's Priority of Use Supports Cancellation of Registration

FARAH v. PRAMIL S.R.L., [2008-1329 (Cancellation No. 92/032,341)] (November 24, 2008) [MAYER, GAJARSA, and PROST] The Federal Circuit affirmed the TTAB’s cancellation of Farah’s Reg. No. 2,447,970 on the mark OMIC based upon Pramil’s prioritiy of use.

GENUINE ISSUES OF MATERIAL FACT PREVENT SUMMARY JUDGMENT OF ON-SALE DEFENSE

Lacks Industries, Inc., v. McKechnie Vehicle Components USA, Inc., [2008-1167] (November 21, 2008) [MICHEL, Clevenger, Moore] NON-PRECEDENTIAL The Federal Circuit reversed summary judgment of invalidity of U.S. Patent No. 5,597,213 because of genuine issues of material facts.The Federal Circuit stated that “Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale under § 102(b).” In addition, to satisfy the on-sale bar, the subject matter of the sale or offer for sale must satisfy each limitation of the claim, though it may do so inherently. The Federal Circuit concluded that, when considered in the light most favorable to the patentee, there were genuine issues of material fact about whether the claimed invention was on sale.

IT WAS ERROR TO LIMIT CLAIMS TO PREFERRED EMBODIMENT, PARTICULARLY LIMITATIONS NOT “CENTRAL” TO THE INVENTION

Medegen MMS, Inc. v. ICU Medical, Inc., [2008-1114] (November 20, 2008) [DYK, Rader, Walker] The Federal Circuit reversed summary judgment of non-infringement of U.S. Patent No. 5,730,418 because the district court erred in its construction of the claim term “plug.”
DISCUSSION: The district court construed “plug” as “an elastomeric part that either pivots about a reduced diameter portion or buckles, to establish a fluid flow path.” The district court relied heavily on the finding that “the preferred embodiment[s] of the invention, as discussed throughout the specification and claims, all consistently discuss a plug” with the elastomeric feature, and that the specification “nowhere describes a non-elastomeric or rigid plug.” The district court also stated that Medegen “needed to indicate in the ’418 Patent that a skilled artisan could use alternative plugs and describe how such plugs would perform the functions of controlling fluid flow and achieving minimum fluid displacement in the context of its invention.” The Federal Circuit noted that the term “plug” is not expressly limited by the language of the claims—that is, the elastomeric limitation is not found within the claim itself. The Federal Circuit also noted that there was no contention that the ordinary meaning of the term “plug” does not include a rigid plug or that it has a special meaning in the medical field that requires elastomericity, or that there was any clear disclaimer of non-elastomeric plugs in the specification. The Federal Circuit found that the patent was clear that the elastomeric feature of the plug is merely an example of how to create a fluid flow connection between the inlet valve and the internal fluid chamber, and concluded that the use of an elastomeric plug to establish that fluid flow connection is not central to the invention itself, which is directed to reducing retrograde flow.
COMMENT: It is interesting that Judge Walker, a district court judge sitting by designation, dissented, expressing the frustration all district court judges must have with claim construction, and in particular with construing claims in light of the specification, without importing limitations.

SUMMARY JUDGMENT REVERSED BECAUSE OF FACTS IN DISPUTE ABOUT WHETHER PRIOR ART IS ANALGOUS

Andersen Corporation v. Pella Corporation, [2007-1536] (November 19, 2008) [SCHALL, Rader, Alsup] NON-PRECEDENTIAL The Federal Circuit reversed summary judgment that 6,880,612 was invalid for obviousness, questioning whether the prior art was analogous.
DISCUSSION: The district court held that the invention claimed in the ’612 patent was rendered obvious by an electromagnetic-shielding mesh manufactured by TWP, Inc. (“TWP”) in combination with Japanese Patent No. 195646, disclosing a method of coating a screen with light absorbable black color to reduce reflection. The Federal Circuit found that genuine issues of material fact exist as to whether it would have been obvious to an insect screen designer of ordinary skill to use the TWP mesh as screening material for a reduced visibility insect screen. While agreeing that common sense and the nature of the problem to be solved could lead an insect screen designer to a mesh primarily used for a purpose besides insect screens, the Federal Circuit found that the patentee raised a genuine issue of fact as to whether the electromagnetic-shielding mesh would have been part of the field of invention searched by an insect screen designer and whether such an alternative use would have been obvious.

DOUBLE-PATENTING DEPTH CHARGE SINKS SUBMARINE PATENT

In Re Basell Poliolefine Italia S.P.A., [2007-1450] (November 13, 2008) [LOURIE, Newman, Linn] The Federal Circuit affirmed the decision of the BPAI that U.S. Patent 6,365,687 was invalid for obviousness-type double patenting.
DISCUSSION: The ’687 patent, entitled “Process for the Polymerization and Copolymerization of Certain Unsaturated Hydrocarbons,” issued on April 2, 2002, claiming priority from Italian Application No. 25,109, filed July 27, 1954. On a Commissioner ordered reexamination, the claims were rejected for obviousness-ness type double patented, and the BPAI affirmed, finding that the circumstances did not dictate the application of a two-way test for double patenting. The Board concluded that the patentees “significantly controlled the rate of prosecution throughout the chain of ancestor applications,” and thus the one-way test applied. The Federal Circuit first noted that double patenting is a question of law, and that the determination of whether a one-way or two-way analysis applies is also a question of law. The Federal Circuit noted that the judicially created doctrine of obviousness-type double patenting “prohibit[s] a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent.” In determining double patenting, a one-way test is normally applied, in which the examiner asks whether the application claims are obvious over the patent claims. In unusual circumstances, where an applicant has been unable to issue its first-filed application, a two-way test may apply, in which “the examiner also asks whether the patent claims are obvious over the application claims.” The Federal Circuit explained that the two-way test is “a narrow exception to the general rule of the one-way test” that arose out of the concern to prevent rejections for obviousness-type double patenting when the applicants filed first for a basic invention and later for an improvement, but, through no fault of the applicants, the PTO decided the applications in reverse order of filing, rejecting the basic application although it would have been allowed if the applications had been decided in the order of their filing. The Federal Circuit readily concluded that the applicant was the cause of the delay and thus they were not entitled to the two-way test for double patenting.
The Federal Circuit also rejected the patentee’s complaint that the Board did not conduct a full Graham analysis, noting “this court has endorsed an obviousness determination similar to, but not necessarily the same as, that undertaken under 35 U.S.C. § 103 in determining the propriety of a rejection for double patenting.

Appellant Waived Challenge to Improperly Appointed BPAI Members

In Re DBC, [2008-1120] (November 3, 2008) [LINN, Dyk, Stearns] The Federal Circuit affirmed the Board’s determination that the claims would have been obvious, and that DBC waived challenging the appointment of the administrative patent judges of the BPAI.
DISCUSSION: The Federal Circuit found that DBC waived its objection to the composition of the BPAI, by not raising that issue before the BPAI.
The Federal Circuit rejected DBC’s argument that the references did not present a substantial new question of patentability, finding that the additional reference was not cumulative. The Federal Circuit also affirmed the BPAI’s rejection of evidence of commercial success, noting that a proponent must offer proof “that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” The Federal Circuit found that DBC did little more than establish substantial sales, and thus it could not conclude that the BPAI’s decision was not supported by substantial evidence.