Prosecution Group Luncheon Patents

1. Prosecution Group LuncheonPatents April, 2011

2. 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”

3. 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

4. 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 

5. 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 

6. 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 doesn’t 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 don’t deserve it”

7. Written Description in Mechanical Context • Crown Pkg’g 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

8. 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

9. 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%