Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

Patents, patents, patents …

1. In an appeal from an International Trade Commission (ITC) ruling, the Federal Circuit found what was essentially an implicit (as opposed to express, as is typically required) disavowal of claim scope where the specification of the patent-in-suit extensively focused on solving the problem in the prior art technology and enabling the narrower, disavowed claim scope, as opposed to the broader claim scope sought by the patentee. The technology related to garage door openers and the location of an infrared detector in the system. The opinion is here. The takeaway here is to be careful about writing a specification that describes a problem in the prior art and narrowly focuses on the technology or methods for solving the problem.

2. In another recent opinion in a patent case, the Federal Circuit held, among other things, that a denial of a motion for summary judgment against a patentee does not immunize that party from a finding that the case, later determined against that party, was exceptional for purposes of attorneys’ fees. The Court stated that overcoming summary judgment does not mean that a party’s case was objectively reasonable. The denial of summary judgment was one fact out of the totality of circumstances that the Court is to consider in evaluating whether the case was exceptional. In this case, there were weak infringement claims asserted by the patentee, infringement of the other side’s patent (both parties asserted infringement claims against each other), and a generally weak position on obviousness even though it was strong enough to overcome summary judgment. The jury later found the patentee’s patent invalid as obvious. Finally, the Federal Circuit noted a potentially questionable motivation by the patentee to continue litigating the case while there was a related ITC proceeding taking place. The takeaway here is to evaluate your case honestly and carefully, and avoid playing fast and loose with the judicial system, so as to avoid fee awards against your clients.

3. In yet another recent opinion, the Federal Circuit held, among other things, that offering other comments to the Patent Office in a boilerplate manner such that “the amendment was not made to overcome prior art” may not be effective in avoiding prosecution history estoppel. Similar efforts are often made “the amendment is not intended to be limiting” in responding to an Examiner’s Statement of Reasons for Allowance (for example). At any rate, here, the Federal Circuit gave no weight to a statement made by Amgen in continued prosecution that the amendment was not made to overcome the prior art after it accepted an amendment proposed by the Examiner, which secured allowance of the application. As a result, based on prosecution history estoppel, the Federal Circuit found that Amgen was not entitled to resort to the doctrine of equivalents in its infringement case. The takeaway here is that even if it is the Examiner that proposes an amendment, once the applicant accepts it, if it is to overcome a rejection, prosecution history estoppel will likely be found (even if the applicant puts statements to the contrary – here, of a boilerplate nature – in the Patent Office record).