A fascinating ruling dealing with design patents, amendments made during prosecution, and limitations on claim scope was handed down by the Court of Appeals for the Federal Circuit on September 12, 2019 in Curver Luxembourg, Sarl v. Home Expressions Inc..[1] Curver is an important piece in an otherwise scant design patent case law. Curver Luxembourg …
Category: 102
35 U.S. Code § 102 – Conditions for patentability; novelty.
(a)Novelty; Prior Art.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) Exceptions.—
(1)Disclosures made 1 year or less before the effective filing date of the claimed invention.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2)Disclosures appearing in applications and patents.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c)Common Ownership Under Joint Research Agreements.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d)Patents and Published Applications Effective as Prior Art.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
Fed Circuit Watch: Cat’s Out of the Bag: Continuous Reduction to Practice is Reasonable Diligence
Arctic Cat Inc. has been involved in a few patent-related cases in recent years, including one case from 2018 which we discussed on this blog dealing with the law of obviousness’s motivation to combine analysis under 35 U.S.C. §103. Its most recent foray into the Court of Appeals for the Federal Circuit resulted in its …
Fed Circuit Watch: Pre-Critical Date Surgeries Not Invalidating Public Uses
In the first split precedential decision of 2019 by the Court of Appeals for the Federal Circuit, the Fed Circuit assessed the issues of invalidating public disclosure versus an inventor’s exception to experimentally perfect an invention for its intended purpose. That case, Barry v. Medtronic, Inc.,[1] decided on January 24, 2019, split heavily because of …
SCOTUS Watch: On-Sale Bar Still Valid Under AIA
On January 22, 2019, the United States Supreme Court handed down a highly anticipated ruling that has caused measurable discrepancies amongst the patent community after the America Invents Act (AIA) was enacted. That ruling, Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc.,[1] held that the on-sale bar applies to confidential sales more than one year …
Fed Circuit Watch: Different Evidence + Different Standards of Review = Different Validity Result
The Court of Appeals for the Federal Circuit presented an interesting paradox in patent validity challenges, especially when the same parties bring forth essentially the same issues, but have different results in different federal agency or judicial reviews, as was seen in Nobel Biocare Services AG v. Instradent USA, Inc.,[1] decided on September 13, 2018. …
Fed Circuit Watch: PTAB Anticipation Analysis All Wrong
Anticipation in patent law means the claimed invention lacks novelty, or is not new; in other words, the invention was already invented.[1] Anticipation, as codified in 35 U.S.C. §102(a) (or §102(b) in pre-AIA statute), is the gateway substantive legal analysis which must take place in order to assess patentability of an invention. Therefore, when the …
Fed Circuit Watch: Hyperlinked Material in Federal Register Notice is Prior Art
What constitutes prior art is not as easy as it may seem. While it may be uncontroverted that a Federal Register notice is prior art, the hyperlinked materials in that notice is what was at issue in Jazz Pharm., Inc. v. Amneal Pharm., Inc.,[1] decided by the Court of Appeals for the Federal Circuit on …
SCOTUS Watch: Challenge to Secret AIA On-Sale Bar as Helsinn Granted Certiorari
On June 25, 2018, the United States Supreme Court granted the petition for writ of certiorari requested by Helsinn Healthcare S.A. In the appellate case which had been winding its way through the federal courts, Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.,[1] the Court of Appeals for the Federal Circuit ruled against Helsinn in …
Fed Circuit Watch: Swearing Behind Must be Supported by Sufficient Evidence
On April 17, 2018, the Court of Appeals for the Federal Circuit held in Apator Miitors ApS v. Kamstrup A/S,[1] that in order for a patent assignee to swear behind a reference by antedating its own conception, it must do so by more than just merely providing the inventor’s statement of conception. The facts are …
Fed Circuit Watch: Unreasonably Broad PTAB Claim Construction Reversed
On March 19, 2018, the Court of Appeals for the Federal Circuit rejected, in In re Power Integrations, Inc.,[1] a PTAB decision finding that claims were invalidated as anticipated as unreasonably overbroad. The claim construction was subject in an ex parte reexamination of Power Integrations’ U.S. Patent No. 6,249,876 (‘876). ‘876 is directed to “Frequency …