• Federal Circuit says inequitable conduct can be inferred from activities in a later patent litigation?

    Although the patent prosecution process is adversarial in nature, patent practitioners must be keenly aware of their duty to maintain the integrity of any subsequently issued patent by supplying the patent examiner with all prior art that is believed to be relevant and also avoiding any misrepresentations of the prior art.  Patent litigators have long been aware of the potential pitfall of having a patent invalidated based on inequitable conduct due to activities of a patent prosecutor carried…

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  • Federal Circuit says inequitable conduct can be inferred from activities in a later patent litigation?

    Although the patent prosecution process is adversarial in nature, patent practitioners must be keenly aware of their duty to maintain the integrity of any subsequently issued patent by supplying the patent examiner with all prior art that is believed to be relevant and also avoiding any misrepresentations of the prior art.  Patent litigators have long been aware of the potential pitfall of having a patent invalidated based on inequitable conduct due to activities of a patent prosecutor carried…

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  • Efficient infringer lobby achieves bipartisan effort to abrogate Native American tribal sovereignty

    The patent deal with the St. Regis tribe doesn’t shield the patents from validity challenges coming from a Hatch-Waxman trial recently concluded in Texas federal court. “To be clear, if the District Court ruling is adverse to Allergan’s patent position, and there is an FDA approval of a generic version of RESTASIS®, that product could enter the market many years in advance of the listed patent expiry dates,” Allergan’s note reads. The drugmaker further argues that the IPR process in force at…

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  • Burden of Persuasion for Patentability of Amended Claims in IPR Stays with Petitioner

    After a panel of the Federal Circuit affirmed the Board’s decision, in Aqua Products v. Matal, Aqua requested an en banc rehearing. The USPTO Director Joseph Matal joined the appeal on behalf of the USPTO. At issue was whether the Board could place the burden of proof for patentability of amended claims on the patent owner in an IPR, and the Board’s underlying interpretation of the relevant statutes, specifically § 316(d) governing claim amendments and 35 U.S.C. § 316(e) allocating the burden…

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  • LES, Herbex, NIPMO, IP Briefs, the Crammer and Kenya’s Copyright developments – Friday ramblings

    The Licensing Executives Society of South Africa has a very pleasant and active local membership. This week their one day conference attracted over 50 attendees speaking on topics that  included South Africa’s draft IP Policy, OECD tax regime developments, NIPMO’s dynamic progress under Dr Kerry Faul and the Competition Commission’s foray into the world of compulsory licensing. It is as interesting as it is diverse which is real attraction of the LES local chapter and this year they were joined by LES International President Peter Hess, as well as local President Alessia Del Bianco.
    My own involvement was to join Dr Madelein Kleyn in a discussion that traversed new acronyms BEPS and DEMPE in the context of transfer pricing, international tax structures and IP structuring. You might well ask what the heck do you know about that and the answer would be – a lot more now then I did prior to preparing for the discussion. Madelein’s editorial in the latest IP Briefs will provide some context to these developments and all I have to say is that if BEPS and DEMPE work effectively there will be no need for current headaches caused by local exchange control in South Africa, a mechanism designed in part to curtail base tax erosion.
    Without wanting to single out any presentation, Dr Kerry Faul’s update on NIPMO developments was very heartwarming. As an advocate of both intellectual property and Africa, this national initiative to capture and commercialise innovation of some of the smartest minds in South Africa and use it for social good, job creation and general upliftment was commendable to start with. NIPMO was always going to have its challenges and still does but there is evidence of genuine achievement towards its goals. For this Dr Faul received an award from LES which deserves particular mention and congratulations.
    Turning to another initiative that is close to my heart, the Crammer is a concept that attempts to digest a year’s worth of IP developments into a single morning for the benefit of busy in-house counsel, executives and business owners. My firm embraced the idea and now advocates their biggest and boldest Crammer yet next Thursday at the Radisson Sandton (not Gautrain), that I have the pleasure of MCing. You can view the complete agenda in the Watering Hole section here, or just RSVP and view it here. The guest speaker is the excellent Michael Charton who will present My Father’s Coat, a truly inspiring and very relevant South Africa tale. It’s nearly full so hurry!

    “It’s our biggest and boldest Crammer® yet – presented by Adams & Adams to an exclusive audience of in-house legal representatives, entrepreneurs and executive decision-makers. In focusing on IP, commercial and property law developments, our legal professionals will review interesting updates and commentary on subjects ranging from innovation funding, copyright and brand development, to data protection and a number of significant IP and commercial case law studies.”


    Another recent development is news that the ASA in South Africa is continuing to progress its resurgence under the watchful eye of acting CEO Gail Schimmel and the loyal Leon Grobler. Emboldened by the order in the much anticipated Herbex case appeal which had threatened to severely curtail the decision making powers of the ASA they are making progress in re-captivating consumer and industry trust as a self regulated watchdog.
    The upshot of the Herbex order is that although the ASA is not able to rule against non members it is able to adjudicate on whether any advertising is contrary to its code.  This will enable it members, which are vast ranging and include a number of industry associations embracing media, consumers and broadcasting to elect not to accept advertising which is contrary to the code. For more on the ASA on this blog, click here.
    Looking north, Kenya’s Copyright (Amendment) Bill 2017 was recently tabled in parliament for a first reading. It has provisions that seek to update copyright laws with the digital age and information systems, as well as specific benefits for those that are blind, have visual impairments and certain physical disabilities. It also introduces the concept of a resale royalty right. I am hoping that our colleagues in East Africa will provide some commentary on this development in a future posts together with news of the Kenya Copyright Board’s new logo which is the subject of a competition launched by their Department of Justice, with almost $2000 worth of prize money up for grabs.

    Have a good weekend!
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  • “Inadvertent repetition of biographical boilerplate was not an egregious theft intentionally performed?”.

    A post at the Guardian on the Bialosky matter begins:

    More than 70 authors, including Pulitzer prize winners Jennifer Egan and Louise Glück, have come to the defence of the editor and poet Jill Bialosky after she was accused of plagiarism, saying that Bialosky’s “inadvertent repetition of biographical boilerplate was not an egregious theft intentionally performed”.

    The problem with the word “inadvertent” is that there was a deliberate substitution of certain words to avoid explicit word-for-word plagiarism; as noted in the Guardian:

    Logan provided examples of Bialosky’s writing and the passages from Wikipedia, adding that “many of Bialosky’s changes here and elsewhere – ‘barely’ for ‘seldom’, ‘verse’ for ‘poetry’, ‘unleashed’ for ‘gave rise to’, ‘total’ for ‘complete’ – are the slight, guilty revisions of the serial plagiarist”.

    link: https://www.theguardian.com/books/2017/oct/12/writers-defend-author-accused-plagiarism-jill-bialosky-poetry-will-save-your-life

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  • OF +日付

                            目次はこちら

    OF +日付

    $$ On page 58 of the publication `Design News` of Dec. 2, 1996 is disclosed an apparatus for protecting a crankshaft rear oil seal from external contamination. (USP5996542)

    $$ A fuller description can be found in the manual of The Perkin-Elmer FT-IR microscope and also in the previously referred to article entitled "An FT-IR microscope" published in American Laboratory of November 1990. / 充分な説明はパーキンエルマFT-IR顕微鏡のマニュアルに見いだすことができ、そしてまた1990年11月にアメリカンラボラトリ社で発行された「FT-IR顕微鏡」と題する以前に示した文献にも見いだすことができる。(USP5946131)

    $$ This is a continuation of International Application No. PCT/GB98/00006, with an international filing date of Jan. 2, 1998. (USP6176014)

    $$ This is a continuation of U.S. Ser. No. 09/068,849, filed May 19, 1998, now abandoned, which is a continuation of International Patent Application No. PCT/GB97/00893, with an international filing date of Mar. 27, 1996. (USP6507030)

                            目次はこちら

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  • Owens Corning wins at CAFC


    Fast Felt Corporation owns U.S. Patent No. 8,137,757, which describes and claims methods for printing nail tabs or reinforcement strips on roofing or building cover material. Fast Felt sued Owens Corning for infringement, and Owens Corning then filed a petition with the Patent and Trademark Office (PTO) seeking an inter partes review of claims 1, 2, 4, 6, and 7 under 35 U.S.C. §§ 311–19. The Patent Trial and Appeal Board, acting as the delegate of the PTO’s Director under 37 C.F.R. § 42.4(a), instituted a review of all of the challenged claims on grounds of obviousness. Institution of Inter Partes Review at 26, Owens Corning v. Fast Felt Corp., No. IPR2015-00650 (P.T.A.B. Aug. 13, 2015), Paper No. 9 (Institution Decision). After conducting the review, the Board concluded that Owens Corning had failed to show obviousness of any of the challenged claims. Final Written Decision, Owens Corning v. Fast Felt Corp., No. IPR2015-00650, 2016 WL 8999740, at *23 (P.T.A.B. Aug. 11, 2016) (Final Decision).

    Owens Corning appeals from the Board’s decision. It contends that, once the key claim term is given its broadest reasonable interpretation, the record conclusively establishes obviousness. We agree, and we reverse the Board’s decision.

    Specifically


    Owens Corning first argues that the Board, when evaluating obviousness in light of the prior art, at least implicitly adopted an erroneous claim construction. Specifically, it contends that the Board effectively treated the “roofing or building cover material” as limited to material that either has been or would be coated or saturated with asphalt or asphalt mix. And it contends that such a construction is legally incorrect under the broadest-reasonable-interpretation standard applicable in the IPR. We agree as to both parts of this contention

    (…)

    In this case, it is not necessary or appropriate to remand for the Board to reassess the evidence in light of the correct claim construction. On the evidence and arguments presented to the Board, there is only one possible evidence-supported finding: the Board’s rejection of Owens Corning’s challenge, when the correct construction is employed, is not supported by substantial evidence. See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077, 1082 (Fed. Cir. 2015) (reversing rejection of IPR challenge). Moreover, in this court, after Owens Corning sought outright reversal on this ground in its opening brief, Fast Felt in its responsive brief did not ask for a remand if this court adopted a claim interpretation not limited by any requirement of asphalt coating or saturation.

    (…)

    Owens Corning’s petition did not restrict the claim scope based on coating or saturation; the Institution Decision did not adopt such a limiting construction, Institution Decision at 5; and when Fast Felt relied on a limitation based on asphalt coating or saturation in its Patent Owner’s Response, Owens Corning clearly asserted in its Reply that “Asphalt Saturated Substrates Cannot Be Used To Distinguish The Prior Art Because No Such Limitation Is Recited In The Claims,” J.A. 339. In these circumstances, where only one answer is supported by substantial evidence and there is neither a request nor an apparent reason to grant a second record-making opportunity, reversal is warranted.

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  • The CAFC addresses Grammatical Ambiguity in Organik Khimya


    Grammatical Ambiguity

    Organik also argues that the ’435 specification provides an open-ended definition of “swelling agent,” and that the Board improperly adopted the narrower of two possible constructions of a “grammatically ambiguous passage.” Organik Br. 34. Organik argues that the broader construction of any ambiguity is required by law, citing In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015), aff’d sub nom. Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), as authorizing the broadest reasonable construction in PTO examination practice. The asserted ambiguity is in the following passage in the specification:

    Suitable swelling agents include, are those which, in the presence of the multistage emulsion polymer and monomer, are capable of permeating the shell and swelling the core. Swelling agents may be aqueous or gaseous, volatile or fixed bases or combinations thereof.

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  • Impact of the 15-year Design Patent Term

    If I were preparing to file a design patent around early May 2015, I might have held-off a bit on the filing to pass the May 13, 2015 threshold.  Design patents stemming from applications filed on or after that date have a 15-year patent term (calculated from patent issuance) as opposed to a 14-year term for those […]

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  • Regeneron v. Merus: En Banc Chances Rise

    by Dennis Crouch Prof. Hricik and I have both previously written about the Regeneron inequitable conduct decision.  The following short summary comes from Hricik: [The] district court … held that people substantively involved in prosecution of the ‘018 Patent knew of but-for material references, which were not disclosed.  Although the district court had intended to hold […]

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