- Posts by Joshua I. RudawitzAssociate
Joshua I. Rudawitz is an associate in Nutter’s Intellectual Property Department. He focuses his practice on all aspects of patent law, drawing on his mechanical engineering background and love of technology. Josh is a regular ...
Giles Rich, the former Chief Judge of the Federal Circuit, once famously stated that “the name of the game is the claim.” Meaning, the patent claims themselves define the scope of the property right held by a patent owner. However, three recent Federal Circuit decisions may be shifting the spotlight away from the claims alone and shining a light onto the patent as a whole. The cases, Lexington Luminance v. Amazon.com, Fenner Invs., Ltd. V. Cello P’ship, and Pacing Tech. LLC, v. Garmin Int’l, Inc., place a stronger focus on the specification in the first instance—above even the plain meaning of the claims.
The general proposition that the courts should look to the intrinsic evidence (i.e., the specification, the figures, and the prosecution history) is not new. For example, in Phillips v. AWH Corp. the CAFC stated that the claims “are generally given their ordinary and customary meaning” as understood by persons skilled in the field of invention. The Phillips decision also stated that, in addition to looking at the plain meaning of the claims, the specification and the prosecution history may be consulted to ascertain the meaning of the claims. In Lexington Luminance, Fenner, and Pacing Tech., however, the CAFC appears to take this one step further.
The Federal Circuit recently issued a decision in Antares Pharma, Inc. v. Medac Pharma, Inc. (Fed. Cir. 2014) that examined the issue of whether claims have been properly broadened in a reissue application. A patent holder can seek broadened reissue claims within a two year period from the grant of the original patent, as set forth in 35 U.S.C. § 251. However, there are restrictions on how a patentee can broaden claims during the reissue proceeding. Those restrictions include 1) the recapture rule and 2) the original patent requirement. The Court in Antares found reissue claims to be invalid for failing the original patent requirement. Under the original patent requirement, the invention claimed in the reissue application must be directed to the same invention disclosed in the original patent. The Court found that the original patent requirement mandates that newly claimed subject matter be disclosed in an explicit and unequivocal manner in the specification. In other words, the newly added claims cannot be merely suggested or indicated in the specification. In contrast, the Court noted that continuation and divisional applications are avenues for applicants to shift the scope of the claims from one invention to another without the original patent requirement of § 251.
The examiner count system is the stick by which a patent examiner’s production is measured. Although the U.S. Patent and Trademark Office(USPTO) does set expected time limits for each task, examiners’ production goals are met by receiving “counts,” which are accrued by completion of various tasks associated with the examination process. Under the current count system, more counts are granted for tasks performed early in prosecution to provide an incentive for examiners to “dispose” of cases quickly—either through abandonment or the granting of a Notice of Allowance. Thus, the count system serves as a reminder that patent examiners and patent applicants are not opponents, but rather members of the same team who are intended to work together to move patent applications through the system.
The Leahy-Smith America Invents Act provided for post issuance proceedings that allow the Patent Trial and Appeal Board (the PTAB) of the United States Patent and Trademark Office (USPTO) to review issued patents for validity. These proceedings have become a popular choice for defendants in patent litigation due to a lower standard for proving that a patent is invalid, the opportunity to participate in the proceedings, and a relatively shorter duration and lower costs when compared to litigation. One type of post issuance proceeding is an Inter Partes Review (IPR), in which a petitioner may challenge the validity of one or more claims of an issued patent under 35 U.S.C. §§ 102 or 103 in view of (only) patents or printed publications. The PTAB must grant the petition if the petitioner demonstrates that there is a “reasonable likelihood” that it can prove at least one claim is invalid. If the petition is granted, the PTAB is given one year to issue a final determination on the claims at issue.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.