586 F.3d 1376, 2009 U.S. App. LEXIS 25388 (Fed. Cir. 2009)
MAJOR ISSUES: Anticipation–lack of novelty
Printed publication more than a year before patent application filing–Section 102(b)
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Kappos v. Hyatt, 132 S. Ct. 1690 (2012) (Thomas, J.; Sotomayor, concurring). For a slip opinion, click here. KapposHyatt.USSC
Hyatt deals with judicial review of PTO rejection of a patent applicant’s claim. The Court holds that an applicant can bring a “civil action” in a district court challenging a rejection that has been affirmed by the PTO Board and can, in the action, (1) freely introduce new evidence, including declarations and testimony, and (2) obtain a “de novo” decision fact issues pertaining to patentability. Importantly, when an applicant does introduce new evidence, a court in a Section 145 civil action need not give deference to the PTO’s fact finding on patentability.
Also of interest in Hyatt is the underlying story, which is discussed below. The facts of the case reveal an amazing and ominous possibility. The possibility is that the applicant Hyatt could obtain a patent, which would have a term of 17 years measured from the issue date (which would be after 2012), but with an effective filing date of 1995 (or 1984 or 1975). The patent might have broad claims drafted to cover products now (2012) being widely marketed in the computer and electronics industries. However, as will be seen, neither the Supreme Court nor the lower courts (Federal Circuit and district court) have actually ruled on the merits. Thus, it could well be that the lower courts will in due course uphold the PTO’s rejections of Hyatt’s numerous “new” claims as lacking written description support under 35 U.S.C. Section 112. Read CPLRG 0080
Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013) (Breyer; Kagan, concurring; Ginsburg, dissenting). For a slip opinion, click here.Kirtsaeng03192013
Kirtsaeng is a landmark decision addressing one of the grandest and most universal of issues of intellectual property: should there be “international exhaustion” of an intellectual property right? Can an intellectual property owner prevent importation of a product into a country when the specific product was originally made and sold in another country with the owner’s permission? Does it matter that owner qualified the permission with a territorial restriction?
Kirtsaeng is a copyright case. The Court, by a majority of six of the nine justices, held that a first authorized sale outside the United States (in Thailand) exhausted the owner’s exclusive right of distribution under United States copyright law. The case involved textbooks, but the holding will directly impact importation of a wide variety of products containing copyrighted material, including software. It may impact exhaustion as applied to the unauthorized importation of patented products made or purchased legally abroad. Read CPLRG 0083
Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Co. 590 F.3d 1326 (Fed. Cir. 2010) (GAJARSA, Michel & Friedman)
MAJOR ISSUES: Interference between patent and application; interpretation of claim copied by an applicant from a patent; written description support; PTO Rule 41.200(b) contrary to judicial authority Read CPLRG 0017
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