Mere Arguments in / Reexam Do Not Create / Intervening Rights

Marine Polymer Technologies, Inc. v. Hemcon, Inc., [2010-1548] (March 15, 2012) [LOURIE] The Federal Circuit en banc affirmed judgment of the district court by an equally divided court, vacating an earlier panel decision that reversed the decision finding intervening rights were created by the patentee's arguments during reexamination.
DISCUSSION: The Federal Circuit held that the reexamination statute only provides for intervening rights when claims are amended, and not as a result of patentee's argument. In so doing the Federal Circuit applied to Canons of claim construction, the first, that use of the phrase "the invention" has a limiting effect on the scope of the claims, and second that claim differentiation is note a hard and fast rule. In addressing the intervening rights question, the Federal Circuit explained that "under §307(b), the first question when assessing whether intervening rights arose form a reexamination is whether the asserted claim is "amended or new"; if the answer is no, that ends the inquiry. Only if the claim at issue is new or has been amended may the court proceed to the second step in the analysis and assess the substantive effect of any such change pursuant to §252."

To be Your Own Lexicographer, You have to Do So Clearly

In re Chaganti, [2011-1344] (March 9, 2012)[NEWMAN, REYNA, WALLACH] The Federal Circuit affirmed the BPAI's decision affirming the rejection of Chaganti's claims.
DISCUSSION: At issue was whether the claims directed to a computer-implemented method of marketing an intangible property interest excluded stocks and bonds. While Chaganti argued that when properly construed in light of the specification, "intangible property interest", the Federal Circuit disagreed, noting that while a patentee may act as his own lexicographer, a a patentee must clearly express that intent in the written description.

Canos of Claim Construction Requie Reversal

Digital-Vending Services International, LLC v. The University of Phoenix, Inc., [2011-1216] (March 7, 2012) [RADER, Linn, Moore] The Federal Circuit vacated summary judgment of non-infringement as to some claims and affirmed summary judgment of non-infringement as to other claims, and remanded.
DISCUSSION: The Federal Circuit noted that a party may not introduce new claim construction arguments on appeal or alter the claim construction positions it took below, and refused to consider arguments not presented to the court below. The Federal Circuit relied on a number of Canons of claim construction, including that a claim term is presumed to have the same meaning throughout all of the claims, in the absence of any reason to believe otherwise. The Federal Circuit also relied upon the rule that "claims are interpreted with an eye toward giving effect to all terms in the claim." The Federal Circuit also noted that the specification avoided any hint that the inventors clearly disavowed claim scope. Finally the Federal Circuit noted the rule that because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the the specification, and thus is less useful for claim construction purposes. The Federal Circuit reversed the grant of summary judgment on non-infringement of the affected claims, but affirmed as the the remanider

An Invention that Can Be Made with Routine Experimentation is Obvious

In Re Pepperball Technologies, Inc., [2011-1137] (March 7, 2012) [NON-PRECEDENTIAL] The Federal Circuit affirmed the BPAI's affirmance of the rejection of the claims of U.S. Patent Nos. 6,393,992 and 7, 194,960 during reexamination.
DISCUSSION: The Federal Circuit analyzed the references and agreed with the BPAI that the invention could have been made by a person of ordinary skill in the art "with routine experimentation" and thus was obvious.

Lack of Corrporation Defeats Claim of Co-invention

Weaver v. Houchin, [2011-1327] (March 7, 2012) [NON-PRECEDENTIAL] [LOURIE, BRYSON, MOORE] The Federal Circuit affirmed summary judgment that Weaver failed to prove he was a coinventor of U.S. Patent No. 7,316,614.
DISCUSSION: After U. S. Patent No. 7,316,614 issued with five inventors, but a Certificate of Correction issued removing four of the inventors, who then filed suit. The other deleted inventors dropped out, but Weaver persisted. However, the district court found that Weaver's claim of co-invention lacked corroboration, and the Federal Circuit agreed.

Applicant for a Standard Character Mark Can't Rely Upon Design Differences wtih a Cited Composite Mark

In Re Viterra Inc., [2011-1354] (March 6, 2012)[O'MALLEY, DYK, MOORE] The Federal Circuit affirmed the TTAB decision that applicant's mark XCEED is likely to cause confusion with the existing mark XSEED.
DISCUSSION: The Federal Circuit reviews the TTAB's legal conclusions de novo and is factual findings for substantial evidence. Viterra conceded the goods were identical, and could not challenge the channels of trade because they were not restricted in either its application or the cited registration. Viterra focused on the dissimilarity of the marks, arguing that the marks were different because of the design in the cited registration; the marks are phonetically different because its mark would be pronounced as one word, while the cited registration would be pronounced as two words, and finally that its mark means "exceed" while the cited registration could have several meanings.
The Federal Circuit instructed that the marks must be considered in their entireties, although it may place more weight on a dominant portion of a mark, for example where a part of the mark is descriptive or generic standing alone. The Federal Circuit noted that in the case of composite mark containing both words and a design, the verbal portion is the part most likely to indicate origin. The Federal Circuit noted that where one of the marks is presented in standard characters, the differences in appearance must take into account that the standard character mark could be presented in a manner similar to the design mark. The Federal Circuit also noted that disclaimed matter can still be a part of the dominant portion of a mark for purposes of comparison.
The Federal Circuit concluded that there was substantial evidence supporting the TTAB's decision and affirmed it.

As logn as the Initial Reissue Application is Filed within Two Years, Subsequent Broadening Continuation Reissue Applications can be filed Any Time

In re Staats, [2010-1443] (March 5, 2012) [DYK, O'Malley, Reyna] The Federal Circuit reversed and remanded the BPAI's rejection of claims as being improperly broadened by a reissue filed more than two years after issuance.
DISCUSSION: Staats filed a broadening reissue application within two years from the issuance of the patent relating to the the first preferred embodiment of the invention. While the reissue application was pending, but more than two years from the issuance of the patent, Staats filed a second broadening reissue application relating to the first preferred embodiment. While the second reissue patent application was pending, well almost seven years after the issuance of the patent, Staats filed a third broadening reissue application, and eventually included claims directed to a second embodiment. These were rejected by the Examiner as untimely because they were not related to the subject matter of the original broadening reissue application, and the BPAI affirmed. The Federal Circuit reversed, finding In re Doll, 419 F.2d 925 (C.C.P.A. 1970), which held that the Section 251 time limit applies only to the filing of the first broadening reissue application. The Federal Circuit rejected the PTO 's attempt to distinguish Doll because the subject matter of the later filed broadening reissue application was not related to original reissue application. The Federal Circuit said that In re Doll made no such distinction, and in any event a different approach would be "unmanageable".

Stay away from the Swamp; Decide §§102, 103 and 112 Issues First

Myspace, Inc. v. Graphon Corporation, [2011-1149] (March 2, 2012)[PLAGER, Newman, Meyer] The Federal Circuit affirmed summary judgment of invalidity.
DISCUSSION: Plaintiffs brought a declaratory judgment action that U.S. Patent Nos. 6,324,538, 6, 850,940, 7, 028, 034, and 7, 269, 591 relating to the creation, modification, and searching of databases.
DISCUSSION: At issue was the construction of the term "database", which was important to whether the the claims were anticipated, for which summary judgment is appropriate, or obvious, for which summary judgment is less appropriate. The Federal Circuit began with the ordinary meaning of the claim language itself in the context of the written description of the invention found in the patent and the prosecution history. The Federal Circuit addressed commentators who have pointed out two different approaches to claim construction: the first focusing on the invention disclosed in the patent, and the second focusing on the words used by the patent drafter. The Federal Circuit said it was an oversimplification to consider them competing theories, rather than complementary. Agreeing with the district courts' broad interpretation of "database" the Federal Circuit affirmed the invalidity of the claims.
The Federal Circuit also took time to comment on the minority position that the question of patentable subject matter under §101 should have been addressed first. The majority said that the courts should avoid the swamp of verbiage that is §101 and insist that litigants initially address patent invalidity issues under §§102, 103, and 112.