Prosecution Group LuncheonPatentsJuly, 2011

Inequitable Conduct Post-Therasense• American Calcar, Inc. v. American Honda Motor Co. (FC 2011)

• Inventors examined car navigation system having similar features • Background discussion of PA system left out user-interface aspect

• FC: under “but-for” standard, materiality affirmed as to one patent

• Re other patents: “withheld information may be material if it would have blocked patent issuance under the PTO's preponderance of the evidence standard, giving those patents' claims their broadest reasonable construction”

• Remand to assess materiality under "but-for" test, to apply PTO evidentiary/claim scope standards

• Remand on intent because determination relied on a sliding scale standard rejected in Therasense 

Intramural Conflict in Claim Construction• Retractable Technologies v. Becton, Dickinson & Co. (FC 2011)

• Majority: per Phillips, look at words of the claims, specification, prosecution history, relevant extrinsic evidence; “tether the claims to what the specifications indicate the inventor actually invented” 

– Claim differentiation discussed– Background, summary, specification dictated a narrow construction

• Concurrence– “Claims cannot go beyond the actual invention that entitles the

inventor to a patent”– “[P]urposes for which [patents] exist, including the obligation to make

full disclosure of what is actually invented, and to claim that and nothing more”

• Dissent: “ordinary and customary meaning . . . [to one] of ordinary skill in the art at the time of the invention” – “Body” has no special, technical meaning here– Use “widely accepted meaning of commonly understood words” – “Strong presumption” from claim language that “body” does not

include “one-piece” limitation unrebutted

HR 1249—America Invents Act• To Senate Judiciary Committee (6/28)

• Sec. 18: Business Method Patent Review– Validity challenge available to those “sued for” or “charged

with” infringement of the patent

• “Covered business method patent”: “method or corresponding apparatus for . . . operations used in [relation to] a financial product or service, except that the term does not include patents for technological inventions”

• For infringement suit on “a covered business method patent, an automated teller machine shall not be deemed to be a regular and established place of business” for venue

New Supreme Court Cases• Kappos v. Hyatt • In Sec. 145 action, can applicant present new

evidence that could have been presented to PTO• Are decisions based on such new evidence de novo • FC (en banc): sided with applicant • Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S • Counterclaim by generic mfr. against brand-name mfr.

re: overbroad description of claim scope sent to FDA• Petitioner argued that Hatch-Waxman allows for

correction of misstatements of patent scope • FC: H-W only allows for deleting of improperly listed

patents