Posts Tagged ‘patent claims’

Lightning Ballast II – Judge Lourie Tries to Get to “The Facts of the Matter”

Monday, February 24th, 2014

After reading all 88 pages of this very scholarly opinion which left patent law right where it was post-Cybor – no matter how much weight the parties and amici felt stare decisis deserved – I went back and read Judge Lourie’s concurrence. It is mercifully brief and tries to cast some of the substantive issues in real-world contexts. He writes like a “Dutch uncle” – which the dictionary defines as one who “admonishes sternly and bluntly.” Whether or not you agree with his conclusions, he gets his points across like arrows in “The Hunger Games.”

He reduces the debate about the proper reading of Markman II simply by saying that the distinction between calling claim interpretation a “question of law” vs. a “question for the court” is not a substantial one. Whether or not the Supreme Court will disagree if cert. is granted is a question for another day.


Federal Circuit Reaffirms Cybor Standard in Lightning Ballast Rehearing

Friday, February 21st, 2014

On Friday, a narrow majority of the Fed. Cir. sitting en banc, reaffirmed that claim interpretation is a question of law, to be reviewed de novo upon appeal to the Fed. Cir. (A copy of the decision can be found below.) Judge Newman, for once writing for the majority, ruled that the weight of stare decisis tipped the balance toward not overturning the 1998 Cybor decision, also en banc, which established the de novo standard. Judge Newman wrote that Cybor properly implemented the Supreme Court’s ruling in Markman II (1992) that claim construction is a question of law, and not a question of fact or even a mixed question of law and fact.

She noted the difficulty the Fed. Cir. would face if it had to decide that “a fact was at issue” in any district court ruling on claim interpretation and noted that Cybor did not displace the lower court’s power to rule on many other issues, such as infringement, validity and damages.

Pens will be flying across the law review and blogoshere spaces for years analyzing this decision and I have not had time to read all of it this morning, but the traditional closing of “more later” is certainly an understatement.


Prometheus Unbound – Are Methods Of Medical Treatment The Next “Targets”?

Tuesday, May 22nd, 2012

In my March post “Unnatural Acts – Patenting Diagnostic Tests Post-Prometheus” I wrote:

“I have been trying to formulate diagnostic claims that would pass muster post-Prometheus and I am having trouble. If a researcher discovers the marker, the researcher should be able to patent it and ANY utility it has, including its use for the diagnosis/prediction of disease. Likewise if the researcher discovers a completely new utility for a known marker – e.g., as an  indicator of Alz Disease, this should meet the patent eligibility requirements of s. 101. However, the correlations that the researcher bases the assay claims on are still ‘natural phenomena’ according to Prometheus. So we patent attorneys are completely cycled back into the loop of [divining] what further steps are necessary to yield a patent-eligible claim for the new diagnostic correlation.”

Last night, a new monster crawled out from under the legal bed we have to lie in after Prometheus. It is not simply that diagnostic claims based on “If ‘a’ then ‘b’” naturally-occurring correlations are of doubtful patent-eligibility; we already know that Justice Breyer will exclude such diagnostic claims, such as the one involved in the “Metabolite Dissent,” the first chance he gets – so long as he can hold the Court together. The new monster is a modern Frankenstein stitched together from the language in Prometheus:


Cordis v. BSC – Therasense at Work

Monday, October 3rd, 2011

Last week the Fed. Cir. affirmed the district court’s finding of no inequitable conduct, due to the failure of the applicant or his attorney to cite a relevant prior art reference in a parent application that yielded the two patents-in-suit. Cordis Corp. v. Boston Scientific Corp., App. No. 2010-1311, -1316 (Fed. Cir. Sept. 28, 2011). (A copy of the decision is found at the end of this post.) In the earlier proceeding the district court, in a bench trial, found that BSC had proved the threshold levels of materiality of the reference and intent regarding nondisclosure by clear and convincing evidence. The court went on to hold that applicant had not purged the fraud (my term) by merely citing the reference in the “child application” in a “normal IDS” and that both patents were unenforceable due to IC (ed. note – remember “the fruit of the poisonous tree”).

On appeal, the Fed. Cir. agreed that the reference was material but remanded for additional, more specific findings on intent to deceive, e.g., whether or not the inventor in fact read the search report or the reference. Cordis Corp. v. Boston Scientific Corp., 188 F. App’x 984, 988 (Fed. Cir 2006). The district court, did not make these findings but, rather, reconsidered the evidence of record and found that the “clear and convincing standard” had not been satisfied regarding deceptive intent. The court based its new finding on its opinion that “the inferences argued by plaintiff are supported by evidence of record and are as reasonable as those inferences argued by defendants.” [641 F. Supp. At 359; citing Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528 F.3d 1365 (Fed. Cir. 2008)].