Prosecution Group Luncheon Patents July, 2011

Inequitable Conduct Post-Therasense American Calcar, Inc. v. American Honda Motor Co. (FC 2011) Inventors examined car navigation system having similar features Background discussion of PA system left out user-interface aspect FC: under “but-for” standard, materiality affirmed as to one patent Re other patents: “withheld information may be material if it would have blocked patent issuance under the PTO's preponderance of the evidence standard, giving those patents' claims their broadest reasonable construction” Remand to assess materiality under "but-for" test, to apply PTO evidentiary/claim scope standards Remand on intent because determination relied on a sliding scale standard rejected in Therasense

Intramural Conflict in Claim Construction Retractable Technologies v. Becton, Dickinson & Co. (FC 2011) Majority: per Phillips, look at words of the claims, specification, prosecution history, relevant extrinsic evidence; “tether the claims to what the specifications indicate the inventor actually invented” –Claim differentiation discussed –Background, summary, specification dictated a narrow construction Concurrence –“Claims cannot go beyond the actual invention that entitles the inventor to a patent” –“[P]urposes for which [patents] exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more” Dissent: “ordinary and customary meaning... [to one] of ordinary skill in the art at the time of the invention” –“Body” has no special, technical meaning here –Use “widely accepted meaning of commonly understood words” –“Strong presumption” from claim language that “body” does not include “one-piece” limitation unrebutted

HR 1249—America Invents Act To Senate Judiciary Committee (6/28) Sec. 18: Business Method Patent Review –Validity challenge available to those “sued for” or “charged with” infringement of the patent “Covered business method patent”: “method or corresponding apparatus for... operations used in [relation to] a financial product or service, except that the term does not include patents for technological inventions” For infringement suit on “a covered business method patent, an automated teller machine shall not be deemed to be a regular and established place of business” for venue

New Supreme Court Cases Kappos v. Hyatt In Sec. 145 action, can applicant present new evidence that could have been presented to PTO Are decisions based on such new evidence de novo FC (en banc): sided with applicant Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S Counterclaim by generic mfr. against brand-name mfr. re: overbroad description of claim scope sent to FDA Petitioner argued that Hatch-Waxman allows for correction of misstatements of patent scope FC: H-W only allows for deleting of improperly listed patents