Prosecution Group Luncheon Patents April, 2011

In re Tanaka (CAFC 2011) BPAI: reissue improper if only asserted defect is failure to present additional dependent claims FC reversed –Patent must be wholly or partly inoperative or invalid –Defective patent must have arisen through error without deceptive intent

In re Tanaka (CAFC 2011) Wholly or partly inoperative or invalid –Additional dependent claims are a hedge against invalidity of broader claims (In re Handel, Rich, J.) –Handel involved a known potential prior use Error without deceptive intent not disputed FC rejects argument that relevant discussion in Handel is dicta, notes adherence in intervening cases

Microsoft v. i4i Arguments Oral argument heard this week Challenges clear and convincing standard for overcoming statutory presumption of patent validity (35 U.S.C. § 282) Eight justices are hearing case (Roberts recused); decision expected by end of June

Microsoft v. i4i Arguments--Highlights Microsoft: validity presumption seems much diminished if art not considered by PTO (KSR) –Relaxed standard should apply in all validity-challenge cases Court interested in state of law and congressional intent in 1952 –Radio Corporation of America, 293 U.S. 1 (1934) (Cardozo, J.) –Challenger bears a heavy burden of persuasion; presumption cannot be overcome except by clear and cogent evidence From RCA, i4i argued Congress codified existing presumption in § 282, so clear and convincing is the right standard Microsoft: law on validity presumption all over the map in 1952 –Some courts did not recognize any such presumption, much less one only overcome by clear and convincing evidence –RCA language was dicta, distinguishable because RCA involved a question of priority of invention, not validity

Microsoft v. i4i Arguments--Highlights i4i, U.S.: Congress has made no attempt to change the standard Court: other possible solutions? –Careful jury instructions, e.g. clear and convincing evidence needed, burden more easily satisfied with art PTO did not consider Why should presumption of validity apply if art was not considered? –Validity challenge is collateral attack on governmental decision –Preclusive effect of erroneous invalidation (Blonder Tongue) –Reliance on issuance of patents by owners, investors, licensees –[F]ar from black and white what the PTO does or doesnt consider; rejecting standard would marginalize PTO Breyer: reasons emphasize importance of patents, disaster of invalidation; maybe a worse disaster for the country is to have protection given to things that dont deserve it

Written Description in Mechanical Context Crown Pkgg Tech., Inc. v. Ball Metal Beverage Container Corp. (FC 2011) Q: Do written description rules in biotech cases (e.g. Ariad) apply in other technological fields? Reverses trial court invalidity finding Confirms that problem-solution approach re: written description (Revolution Eyewear) is alive

Written Description in Mechanical Context Can end, reduces waste when seaming end to body –Problem solved (1) by changing the angle of portion of the inside wall, and (2) by reducing width of bead –Also discloses tool-part that resolves mechanical issues Court: claims can address one or more problems, WD satisfied if description conveys that the inventor was in possession of the invention recited –Two separate, clearly described solutions for improving metal usage were present –Relatedness of described solutions is not an issue –Distinguished enablement from written description Spec. did not mandate that problems must always be solved together

EP Applications Hit All-Time High 235,000 European patent filings in 2010 EPO: "after a 2-year slump, the EU and US are nearly back to their levels of patenting before the crisis Europe: over 33% U.S.: 26% Japan: 18%