Patent Law Practice Center

CAFC Approved: Claims Valid in Litigation but Invalid in Reexam

Last month, on October 26, 2012, while so many of us were at the AIPLA annual meeting, the United States Court of Appeals for the Federal Circuit issued an opinion in a matter denying panel rehearing and simultaneously denying rehearing en banc.  The case — In re Baxter, Int’l Inc.

In the initial panel decision in In re Baxter, Int’l Inc., Baxter appealed from the decision of the Board of Patent Appeals and Interferences (“the Board”) affirming the examiner’s rejections of claims 26–31 of U.S. Patent 5,247,434 (“the ‘434 patent”) for obviousness under 35 U.S.C. § 103(a). This may seem like an ordinary, garden variety matter, but this patent had previously been litigated to final judgment in the district court and on appeal to the Federal Circuit.

In her dissent from the original panel decision, Judge Newman quite correctly pointed out:

[W]hen the judicial decision is final as to the issue before the agency, the decision is binding on the agency. Finality is reflected in the law of the case doctrine, which “promotes the finality and efficiency of the judicial process by protecting against the agitation of settled issues.” Christianson v. Colt Industries, Inc., 486 U.S. 800, 815–16 (1988)….A patent that has been adjudicated to be valid cannot be invalidated by administrative action, any more than a patent adjudicated to be invalid can be restored to life by administrative action.

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Rambus Loses Synchronous Memory Device Method in Reexam

Rambus Inc. was on the wrong end of a Federal Circuit decision recently when the CAFC, per Chief Judge Rader, upheld the decision of the Board of Patent Appeals and Interferences in a reexamination in which claim 18 of Rambus’s U.S. Patent No. 6,034,918 was found invalid as anticipated. See In re Rambus, Inc. The ‘918 patent relates to a method of controlling a memory device is disclosed wherein the memory device includes a plurality of memory cells.

Judge Rader, writing for a unanimous majority that also included Judge Linn and Judge Dyk, concluded that substantial evidence supported the PTO’s determination that claim 18 reads on the “memory module” in the prior art.

Register Now for “Prior Art, Obviousness, and the America Invents Act in 2012”

Patent reform has arrived: what will be its impact on those touchstones of patentability, prior art and obviousness?  102 was already a complicated concept for patent practitioners, having undergone evolving interpretations in the PTO and CAFC.  How will the AIA now complicate matters further?  How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? What is truly enabled?

On June 4, 2012, PLI is hosting a seminar entitled, “Prior Art, Obviousness, and the America Invents Act in 2012.” This program will allow you to obtain an essential working understanding of this complicated statute, including recent re-interpretations, case law, and explore the statutory revisions.  Meanwhile, obviousness, the most common reason any application is rejected or patent held invalid, is changing as a result of KSR (already 5 years old). Explore 103 from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSR pigeonhole!

The program is geared to patent lawyers who have some familiarity with existing 35 USC Sections 102/103 and regularly work with the statute in either litigation or patent prosecution. The course will advance the knowledge of all attendees from their respective starting points and provide new insights into the statute, recent amendments, and case law. Seminar attendance includes course handbook and associated course materials. A downloadable course handbook will also be available several days prior to the program start for your review.

Don’t hesitate! Register for Prior Art, Obviousness, and the America Invents Act in 2012 here.

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patents Post-Grant: Update from the Central Reexamination Unit – This post reports on the Central Reexamination Unit’s update on the USPTO’s efforts to refine the patent reexamination process, and that the stream line proposals of 2011 are still being reviewed.

2) Patent Docs: USPTO Seeks Comments on New Sequence Listing Standard – This post summarizes the notice published by the USPTO in the Federal Register regarding  an international effort to revise the standard for Sequence Listing submissions. The post also shares how comments regarding the proposed standard can be submitted for review.

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Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patently-O: Gene Patent Debate Returns to the Federal Circuit – This post reports on SCOTUS’ recently issued GVR order in Association for Molecular Pathology v. USPTO and Myriad Genetics (Fed. Cir. 2012). According to the post, “The Federal Circuit has now released a new briefing schedule — asking the parties to file supplemental briefs by June 15, 2012 addressing the issue: What is the applicability of the Supreme Court’s decision in Mayo to Myriad’s isolated DNA claims and to method claim 20 of the ’282 patent?”

2) Green Patent Blog: Clean Energy Patent Growth Index Shows Record High for 2011 – This post shares the findings of the Heslin Rothenberg firm’s Clean Energy Patent Growth Index (CEPGI) 2011 Year in Review, highlighting that granted green patents were at an all time high of 2331 for last year, a rise of 450 patents, or 24%, over 2010. (more…)