The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending January 17, 2014. Pamela Holland Councill, Karissa Fleming and Kirk Bradley prepared this edition.
Patentable Invention: Obviousness: Scope and Content of Prior Art
Patent Office Procedures: Reexamination
In re Enhanced Security Research, LLC, No. 2013-1114 (Fed. Cir. (P.T.A.B.) Jan. 13, 2014). Opinion by Dyk, joined by Taranto. Dissenting opinion by O’Malley.
Affirming the decision of the Board of Patent Appeals and Interferences (“Board”), now the Patent Trial and Appeal Board, in an ex parte reexamination of U.S. Patent No. 6,199,236 (“the ’236 patent”), the Federal Circuit held that an incomplete reference can be treated as publically available prior art. Further, the Federal Circuit held that Enhanced Security Research, LLC (“ESR”) failed to demonstrate the requisite diligence in prosecuting the ’236 patent.
A third party requested reexamination of the ’236 patent, which claims a computer security device and method for preventing unauthorized individuals from gaining access to a local computer network. The requester provided two potential pieces of prior art, the NetStalker Manual (“the Manual”) and a scholarly article. Upon reexamination, the examiner rejected claims 1-19 as obvious in light of various prior art references. The applicant then amended the claims and appealed to the Board. The Board affirmed the rejection of amended claims 1-5 and 7-19.
On appeal to the Federal Circuit, ESR argued that the Board failed to address the limitations contained in the ’263 patent’s dependent claims. The Federal Circuit noted, however, that ESR did not argue the dependent claims under separate subheadings as Rule 41.27 required, and thereby waived that argument. ESR also argued that the Manual should not be treated as prior art because it was not publicly accessible and was incomplete. The Federal Circuit held, however, that the date inscribed on the Manual and a supporting declaration by the C.E.O. of the company that produces the NetStalker software and NetStalker advertisements constituted substantial evidence to support the Board’s finding that the manual was publically available prior art. The Federal Circuit also held that the Manual qualified as prior art even though it was incomplete because the missing pages from the Manual were not necessary to a full understanding of the software explained in the Manual. The Federal Circuit also held that the Manual and the scholarly article rendered the amended ’236 patent claims obvious.
Finally, because ESR could not show evidence of the exact days when activity specific to the application occurred during the critical period between when the Manual became available and when the ’236 patent application was filed, the Federal Circuit held that substantial evidence supported the Board’s finding that ESR failed to demonstrate the requisite attorney diligence.
In a dissenting opinion, Judge O’Malley disagreed with the Board’s decision to rely on a facially incomplete reference, and with its decision to find that the reference was publically available as of the critical date. Judge O’Malley stressed that the supporting declaration for the Manual never provided a reason for the incompleteness of the reference, or even addressed it, and that the Manual’s missing pages were in the very sections relevant to the claimed invention.
Patentable Invention: Obviousness: Generally
Patentable Invention: Obviousness: Scope and Content of Prior Art
In re Raymond Giannelli, No. 2013-1167 (Fed. Cir. (P.T.A.B.) Jan. 13, 2014). Opinion by Lourie, joined by Rader and Moore.
Reversing the decision of the Patent Trial and Appeal Board (“the Board”), the Federal Circuit held that the Board erred in affirming the examiner’s decision that a chest press machine disclosed in U.S. Patent No. 5,997,447 (“the ’447 patent”) rendered obvious the rowing machine disclosed in U.S. Patent Application 10/78,261 (“the ’261 application”).
The Board found that Giannelli, the applicant, had failed to show that the chest press machine disclosed in the ’447 patent could not be used by “exerting a pulling force on the handles in a rowing motion.” Additionally, the Board found that the ’261 application’s “substantially linear path” encompassed the “slightly curvilinear path” disclosed in the ’447 patent. The Federal Circuit held that the Board should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine, and that “physical capability alone does not render obvious that which is contraindicated.”
Character of a Patent: Generally
The Patent Application: Generally
Patent Office Procedures: Generally
Novartis AG, et al. v. Lee, No. 2013-1160 (Fed. Cir. (D.D.C.) Jan. 15, 2014). Opinion by Taranto, joined by Dyk and Newman.
Affirming-in-part, reversing-in-part, and remanding the determination of the U.S. Patent and Trademark Office (“USPTO”), the Federal Circuit held that no patent term adjustment is available for any time in continued examination, even if the continued examination was initiated more than three years after the applicant’s filing. The Federal Circuit also held that a patent term adjustment is available for time between allowance and issuance of a patent, regardless of whether there is a continued examination in a prosecution.
Novartis AG, Novartis Vaccines and Diagnostics, Inc., and Novartis Corporation (collectively, “Novartis”) challenged determinations by the USPTO of how much time to add to the terms of various Novartis patents. The Federal Circuit held that the patent term adjustment time provided in 5 U.S.C. § 154(b)(1)(B)(i), which excludes continued examinations, is best calculated by determining the length of time between application and patent issuance, then subtracting any continued examination time (and other time identified in (i), (ii), and (iii) of 5 U.S.C. § 154(b)(1)(B)) and determining the extent to which the result exceeds three years. The Federal Circuit also held that allowance-to-issuance time is clearly attributable to the USPTO, and that it should not be distinguished according to whether there is a continued examination in prosecution.
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