Patent Law Practice Center

Federal Circuit: Foreign Application Not Priority in Interference When it Only “Envisions” Invention

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass.  The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application.  The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count.  If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

Goeddel was a consolidated appeal from two decisions of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office in two related patent interference priority contests between the party Haruo Sugano, Masami Muramatsu, and Tadatsugu Taniguchi (together “Sugano”) and the party David V. Goeddel and Roberto Crea (together “Goeddel”).  The Board held that Sugano is entitled to the benefit of the filing date of its initial Japanese application, and awarded Sugano priority as to the counts of both interferences. (more…)

CAFC Rules For False Marking Plaintiff In Stauffer Case

Written by Scott Daniels (partner in Westerman Hattori Daniels & Adrian and Practice Center Contributor)

The CAFC (Lourie, Rader & Moore) today removed one of the major hurdles facing individuals pursuing qui tam actions against others for false patent marking.  In Stauffer v. Brooks Brothers, the CAFC ruled that 35 U.S.C. § 292 permits individuals to “stand in the government’s stead, as assignees of the government’s own claims.” There is no requirement for standing under Rule 12(b)(1) that the individual qui tam plaintiff have, itself, suffered injury from the alleged false marking.

Raymond Stauffer had sued Brooks Brothers and its parent company, Retail Brand Alliance, for marking the mechanism on their bow ties with the numbers of two patents, both of which had expired in the 1950’s.  Stauffer asserted that this identification of the patents constituted false marking under § 292, which provides for a fine of not more than $500 per violation.  It also provides that “any person” may sue for that fine, splitting any recovery with the United States.

Defendants moved to dismiss under Rule 12(b)(1), arguing that Stauffer lacked standing.  The trial judge first stated that Stauffer, as a qui tam plaintiff representing the United States, must establish that U.S. has suffered “an injury in fact,” that the injury was caused by Brooks Brothers, and that a court could redress that injury.  The trial judge then found that Stauffer had failed to allege injury to the U.S. in his complaint, and any assertions that Stauffer himself had been injured would not satisfy the standing requirement.  The judge therefore dismissed the case. (more…)

Reexamination Requests Filed the Week of July 12th

Here is the latest  installment of Reexamination Requests from Scott M. Daniels, of Reeaxamination Alert and Practice Center Contributor…

Notable is a request filed by Medtronic against a patent belonging to Edwards Lifesciences AG for a valve prosthesis.  Also interesting is a request filed by Nalco regarding a Baker Hughes patent – the patent is the subject of an infringement action between the companies that has already featured a preliminary injunction and two trips to the CAFC.

Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly for requests that involve copending District Court litigation, is too long. We therefore report new ex parte and inter partes reexamination requests filed electronically the previous week as they appear on the Patent Office PAIR system.  Information on concurrent litigation is also provided, where available.

Some reexamination requests are still filed by paper.  Because of the time required for the Patent Office to review such paper requests before posting on PAIR, our report may come three weeks after filing.  The information available from the Patent Office may be incomplete in a few cases because not all the reexamination request papers have yet been posted on PAIR.  There may also be gaps in the Patent Office docket numbers listed because, for any of various reasons, a reexamination request has been assigned a docket number but is not ready for posting. (more…)