Common Citation Document Launched By Trilateral Patent Offices

Posted on November 17, 2011 by Warren Woessner

This posting came with a set of presentation slides which you can find at the end of the post.

The Industry Trilateral (of which IPO is a member) initially proposed a Common Citation Document (CCD).  In response, the Trilateral have launched an electronic capability which consolidates access to citation data from the Trilateral Offices combining a priority-based family of patent applications with the cited prior art for each family application.  It is possible to enter the database by means of application numbers or patent numbers and obtain a listing of the entire patent family filed in the Trilateral Patent Offices, as well as all of the other offices that send information to the European Patent Office database.  Together with each of these applications is included the citations cited against that application in that particular country, as well as its applicable status as X, Y, A, etc.  For certain offices such as the European Patent Office and others, the data includes “enhanced information”, including particular sections of the citation that are relevant and the particular claims against which those citations are relevant.  This is the typical information in the Search Reports provided under the PCT.  The USPTO and JPO are planning in the near future to include such “enhanced information” in their reporting of the citations to this CCD.

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Powell v. Home Depot – False Petition Not “Egregious Misconduct”

Posted on November 15, 2011 by Warren Woessner

In Therasense, the Fed. Cir. held that inequitable conduct can be based on non-prior art misconduct, which was characterized as an exception to the “but-for” rule of materiality set out in the decision. This seemed to me to be a warning to applicants that “[t]here is no room to argue that submission of false affidavits is not material” (Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556 (Fed. Cir. 1983). However, in Powell v. Home Depot, App. No. 2010-1409, -1416 (Fed. Cir. Nov. 14, 2011), the court found that a statement in a petition to make special, that was known by applicant to be false before the petition was granted, was not conduct egregious enough to find that applicant had committed inequitable conduct. In other words, some petitions/declarations are more weighty when it comes to tipping the equities in favor of the defendant.

Powell’s attorney filed a petition to make special under MPEP 708.02(I), “prospective manufacture”, averring that he was obligated to manufacture infringing saw guards for Home Depot. However, during the pendency of the petition, Home Depot switched suppliers. Powell did not update the petition. (The district court noted that he could have truthfully alleged actual infringement under 708.02(II)).

Apparently following Rohm & Haas, the district court found materiality and intent to deceive, but found no inequitable conduct upon balancing the equities. The Fed. Cir. noted that the IC standards had changed post-Therasense, and went on to find no inequitable conduct based on the lack of “but-for” materiality – a prior art standard – and insufficiently egregious misconduct on the part of Powell’s attorney. The Fed. Cir. seemed to almost be splitting the hair that the petition was true when it was filed and so the conduct “did not involve the filing of an unmistakably false affidavit” that would rise to the level of “affirmative egregious misconduct.” [Emphasis supplied]. So this decision still leaves patent attorneys to guess how egregious misconduct has to be to trigger the “atomic bomb of patent law.”

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Excerpts From Amicus Briefs Supporting Prometheus

Posted on November 11, 2011 by Warren Woessner

This intriguing compilation “Excerpts From 15 AMICI Briefs Supporting Respondent Prometheus: Mayo Collaborative Services v. Prometheus Laboratories, Inc.,” was sent to me by Mark Corallo of Corallo Media Strategies, Inc., Alexandria, VA.

UNH Law used to be Franklin Pierce Law Center. Interestingly, SAP filed an amicus brief. Not surprisingly, so did Myriad.

Key Excerpts – Amici Briefs – Combined Revised

 

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Supreme Court Asks Government To Weigh In On Saint-Gobain’s Cert. Request

Posted on November 9, 2011 by Warren Woessner

Since I have done two, rather lengthy posts on the Fed. Cir. split decision in Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, 637 F.3d 1269 (Fed. Cir. 2011) , reh’g den. 647 F.3d 1373 (2011), it deserves note that the Court delayed its vote on whether or not to grant cert., and asked the Solicitor General for a brief giving the Government’s position on the issue. This seems like an unusual amount of attention to be given to a fairly narrow issue regarding the doctrine of equivalents – when, if ever, can doe infringement be found when there is no literal infringement and the accused infringer has obtained a patent on the accused invention? At least this is the practical question that will be answered – put technically the question may relate to the burden of proof on the plaintiff to establish doe infringement – should it be higher if the accused infringer has obtained a patent? Remarkably, the Fed. Cir. decision denying rehearing en banc is only eight pages short, with the dissent by Dyk, Gajarsa and Prost. The opinion presents this intriguing question clearly and is well worth a read.

See my previous posts on Saint-Gobain v. Siemens.

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