Ariad v. Eli Lilly - Fed Cir. reaffirms that § 112, first paragraph, contains a written description requirement separate from enablement

Ariad Pharmaceuticals, Inc. v. Eli Lilly (Fed. Cir. March 22, 2010) (En Banc Decision)
The Federal Circuit reaffirmed that § 112, first paragraph, contains a written description requirement separate from enablement.
The court  reversed the district court’s denial of JMOL and held the asserted claims of the ’516 patent invalid for failure to meet the statutory written description requirement.
Opinion:   www.cafc.uscourts.gov/opinions/08-1248.pdf
patent in suit  http://www.google.com/patents?vid=USPAT6410516

Purpose or Intended Use in Preamble generally not limiting for an apparatus claim whose patentability is determined by the claimed structure

Michael Marrin & Etch-It, Inc. v. Jeffrey Griffin & Claudia Griffin, No. 2009-1031 (Fed. Cir. Mar. 22, 2010).
The district court found the asserted patent was invalid under 102(b) as anticipated by several patents. The district court did not treat the asserted claims’ preamble as a limitation because the preamble only was an intended use  and the patentee did not demonstrate a clear reliance on the preamble during prosecution. With this claim construction, the district court found several patents that anticipated the structures in the asserted claims. The patentee appealed and the Federal Circuit affirmed.
The patentee conceived  of the idea of using a scratch-off label to mark beverage containers and cups so that attendees of a gathering or party could keep track of their beverage cups. Figs from Patent 5154448 are shown below. A user could scratch their name on the label to identify their can or cup.

35 USC 271(f) - does not apply to devices, supplied outside the US, that may be used to perform a patented method— Cardiac v. St. Jude

Cardiac Pacemakers v. St. Jude Medical, 2007-1296, –1347, (Fed. Cir 2009) The Federal Circuit, en banc, held that Section 271(f) does not encompass devices, supplied outside the US, that may be used to perform a patented method.

35 USC 271 defines Patent infringement. Section 271(f) is meant to prevent parties from avoiding infringement by shipping a patented device in smaller components and then assembling the components overseas.  Section 271(f) creates a cause of action for infringement for supplying  components of a patented invention for assembly outside the US.

Update on USPTO Green Technology Petition Pilot

 
On March 2, 2010, at the Biotechnology/ Chemical/ Pharmaceutical Customer Partnership meeting at the USPTO, Blaine Copenheaver, (SPE, TC1600) gave a presentation on the USTPO’s Green Technology Petition Pilot.  This pilot will advance “out of turn of the initial examination”  certain “green Technology” applications. The pilot started 12/8/2009 and will run for 1 year and is limited to the first 3000 granted petitions. So far about 800 patent application petitions received. 
Below is an outline of the presentation;

1. Authority and Overview: resources / overview
2. Petition Requirement: common errors and tips
3. Petition Review: process, statistics, examples
4. Future

The presentation can be downloaded here
http://www.cabic.com/bcp/030210/BCopenheaver_GT.ppt
Materials for the entire meeting can be found at http://www.cabic.com/bcp/
Here is a link to past meetings
http://www.uspto.gov/patents/init_events/bcp/index.jsp
keywords: clean technology, sustainability, uspto, renewable energy

Patent assignment assigning all continuation applications was ambiguous to previously issued patent – Euclid v. Vector (Fed. Cir. 2009)

Euclid Chemical Co. v. Vector Corrosion Tech., 561 F.3d 1340 (Fed. Cir., 2009)
A patent assignment assigning all continuation applications was ambiguous to a previously issued continuation patent not specifically identified in the assignment.
Practice Pointers:
Most patent assignments and licenses include listed patent applications and/or issued patents and a catchall clause to include related patent applications and patents, such as “any and all divisional applications, continuations, and continuations in part…” In Euclid, the court found for an assignment that listed a specific issued patent and several specific patent applications, that the standard clause for all continuation applications is not clear as to whether the assignment covers already issued continuation patents. The court looked at the assignment clause that covered a “issued US patent” (singular) as conflicting with the catchall continuation clause thus making the assignment ambiguous as to whether the unlisted issued continuation patent is assigned.  This case shows that practitioners must be careful in drafting even routine clauses, consider the facts and to be clear as to which applications and patents are to be included and excluded. 

PUBPAT releases free claim construction dictionaries

The PUBPAT published free claim construction dictionaries with claim term definitions from patent court cases. 

Genus Claim element "single action of a user input device” found supported under 112P1 by specification “a single click of a computer mouse”

 TRADING TECHNOLOGIES INTERNATIONAL, INC., v ESPEED, INC.,  2008-1392, -1393, –1422    (Fed. Cir. Feb. 25, 2010)
One issue  in TTI v Espeed  was whether the provisional patent application provided support (112P1 -  adequate written description) for a broader claim in the regular patent application that claimed priority back to the provisional application. The provisional application describes only one species while the regular application claimed a broader genus.  “ The provisional application never refers to a “single action of a user input device,” but instead refers solely to “a single click of a computer mouse.”” Op. p. 28.  The Court found the record contained substantial evidence to support the jury’s verdict that the provisional application’s written description was adequate.