The IP Law Outline and Table of Cases are current through April 15, 2012.  See the links below. 

On March 20, 2012, the U.S. Supreme Court issued its opinion in Mayo v. Prometheus regarding the scope of patent-eligible subject matter in process claims. See The IP Law Outline, at pages 1221-22, 1233-35, and 1239-57.

Then, on March 26, 2012, the Supreme Court vacated and remanded Myriad, 7/29/11, for the Federal Circuit’s reconsideration in light of the Court’s decision in Mayo v. Prometheus. See The IP Law Outline, at pages 1221-25, 1237, 1239-54, and 1256-57.

Since the March 11, 2012 posting, the Federal Circuit issued twelve (12) precedential patent law opinions and orders. The “hottest” developments from the cases -- which The IP Law Outline (pages cited below) highlights in red along with the other law and issues from the current cases to distinguish them from the earlier cases -- are:

1) The Federal Circuit’s claim construction in Aventis Pharma, 4/9/12 (Judges Prost, Linn, and Dyk), reiterating from the court’s opinion in Thorner, 2/1/12, that the court will only interpret a claim term more narrowly than its ordinary meaning under two circumstances: 1) when a patentee sets out a definition and acts as its own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution (pages 573-81); for lexicography, the patentee’s clear definition of the term “may be inferred from clear limiting descriptions of the invention in the specification or prosecution history” (pages 770-77), while a disclaimer in the specification (as distinguished from a prosecution disclaimer, which the court stated must be “clear and unmistakable”) is evidenced, under Teleflex (2002), by “expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope,” which was not present in this case because the specification did not indicate that the disputed minimum eight-hour stability limitation was “an essential feature of the claimed perfusion or an advantage of the perfusion over the prior art” – citing Liebel-Flarsheim, 2/11/04 (pages 669-78) (See the “Archives” tab above and my March 11 discussion (in No. 1) of the court’s opinion in Thorner, 2/1/12, with a listing of the types of possible “disclaimers” in the specification, which I based on the Federal Circuit’s about 241 precedential cases on claim construction since Phillips (en banc) – see pages 527-34 for a listing of all the cases and the judges on each panel);

2) The Federal Circuit’s 5-5 split on claim construction in Marine Polymer, 3/15/12 (en banc), with the majority (Judges Lourie, Rader, Newman, Bryson, and Prost) affirming the district court’s narrow interpretation of the term “biocompatible” (which the district court found did not have a plain and ordinary meaning), based on an example in the specification read as a whole describing “the invention” narrowly, and holding that the doctrine of claim differentiation was not applicable in light of the above construction, vs. the dissent (Judges Dyk, Gajarsa, Reyna, Wallach, and Linn) opining that the specification’s description of “the invention” was made in the context of a specific non-limiting “example” and that the doctrine of claim differentiation applied where there was an alternate broader construction of “biocompatible” based on the written description (pages 612, 676-85, 727-30, and 820-31);

3) The Federal Circuit’s split on claim construction in Advanced Fiber, 4/3/12 (Judges Lourie, Prost, and Dyk, dissenting), in which the court held that the district court’s claim construction, which was based in part on dictionary definitions, was erroneous because it excluded an embodiment disclosed in the specification, and that it did not matter that the embodiment was disclosed in a brief single sentence, stating that the “fact that an embodiment is disclosed in a single sentence is not a license to ignore that disclosure” (Judge Dyk, dissenting, opined that the claims as properly construed excluded the embodiment, where the patentee during prosecution provided a specific definition of the disputed term from a technology reference to overcome prior art.) (pages 652-58 and 742);

4) The Federal Circuit’s en banc decision in Marine Polymer, 3/15/12, ruling 6-4 that intervening rights arising from reexamination do not apply to claims that have not been formally “amended” and are not “new” under Section 307(b), and thus rejecting the prior panel’s decision, on 9/26/11, that intervening rights applied where the patentee “amended” its claims during reexamination based solely on substantive arguments disclaiming claim scope (pages 2058-59 and 2077-79);    

5) The Federal Circuit’s en banc decision in Zoltek, 3/14/12, in which the full court sua sponte revisited and vacated a prior panel decision, Zoltek, 3/31/06, and interpreted and held that under Section 1498(a) the government may be liable for direct infringement by its contractors under Section 271(g) (Judge Dyk, dissenting, opined in light of the presumption against extraterritoriality that Section 1498(a) was clearly intended to be limited to the government’s liability for direct infringement under Section 271(a), i.e., the use or manufacture of the invention only within the United States) (pages 1935-37); and

6) The Federal Circuit’s affirmance of inequitable conduct in Aventis Pharma, 4/9/12, under the more rigorous standards for materiality and intent to deceive decided in Therasense, 5/25/11 (en banc), where the district court found that one of the inventors had a specific intent to deceive, based on the evidence at trial and the inventor’s lack of credibility with respect to his reasons for withholding material invalidating prior art references (pages 1613, 1618-25, 1628-30, 1638, 1662-66, 1674-76, and 1692-94).

The Federal Circuit also issued three (3) precedential trademark law opinions. The “hottest” development from these cases was the court affirming the TTAB’s decision that a mark on a closure cap design for a medical testing tube was not registrable because it was functional.  Judge Linn dissented, arguing that the mark, when properly viewed as a whole, was not functional (pages 2008 and 2019-20).

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