Patent Prosecution Luncheon

October 2014

Patent Document Exchange

• China now participating in Patent Document Exchange (PDX) program.– Effective October 8,

2014

• Solves foreign priority document problem with bypass continuation originated in China

Cooperative Patent Classification

• Korea now joining the Cooperative Patent Classification (CPC) system– January 1, 2015

• Current CPC patent offices– US– EPO– KIPO

Other USPTO Notes

• The After Final Consideration Pilot Program (AFCP) now extended to September 30, 2015– File Request for AFCP- note new form

(Form PTO/SB/434) – File Response to Final Office Action – Amendment to at least one independent claim

that does not broaden it– Be available for an interview

• Revised Myriad/Mayo guidance expected

• FY 2014: 300,000+ utility patents issued

Am. Calcar v. Honda (Fed. Cir.)

• Inequitable conduct by failure to disclose• Car navigation system, prior art discussed in

specification• Not disclosed: photos, owner’s manual, how-

to guide written by inventor• Twist: jury found not obvious, but judge find

material (burden of proof discrepancy)

• Newman, dissenting: all this came out in the reexam, and claims survived, thus not material.

Millipore v. Allpure (Fed. Cir.)

• “Removable, replaceable” ≠ disassembled unit– No literal infringement

• Narrowing amendment?• Seal with “a first end comprised of a bellows-

shaped part sealingly attached to said holder, and a second end comprising a self-sealing membrane portion … whereas the transfer member… is removable for replacement thereof [[after use]]…”

• YES. Estoppel presumed. No equivalents.

Robert Bosch v. Snap-On (Fed. Cir.)• Means-plus-function? “program recognition device”

and “program loading device”• “wherein… a program version… is queried and

recognized by means of the program recognition device”

• No presumption, but §112(f) still invoked.– Spec does not provide any structural description, all

functional– Expert saying PHOSITA would understand is not enough.

• No structure = means+function• Means+function + no structure = indefinite• No structure = indefinite?

Compare Inventio (Fed. Cir. 2011)

• “modernizing device” not means+function– “connected to an elevator control and computing

unit” – Internal components of processor, signal

generator, converter, memory, signal receiver shown

– Dependent claims to “input, output, and signal receiver aspects”

• Robert Bosch v. Snap-On– connects through diagnostic plug to vehicle– not enough structure

Teva v. Sandoz (Supreme Court)• “Whether a district court’s factual finding in support of

its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Federal Rule of Civil Procedure 52(a) requires.”

• Argument yesterday. Transcript inconclusive but suggests split opinion. Struggle to draw lines.

• Kagan: “So what you're saying is that in certain cases the factual finding truly is the legal determination, but that in other cases, other matters can come in to drive a wedge between the two.”