Federal Circuit Review – Issue 8 – 02-21-2014

Each week in the Federal Circuit Review, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson and Bob Schaffer




Federal Circuit Rules that Reexamination Decision Misapplied Facts From an Incorrect Claim Construction and Mistakenly Imposed a Requirement for a Cross-Appeal

Tempo Lighting, Inc. v. Tivoli, LLC, No. 2013-1140, 2014 U.S. App. LEXIS 2437 (Fed. Cir. Feb. 10, 2014) (Rader, C.J.). Click here for a copy of the opinion.

Tempo requested inter partes reexamination of Tivoli’s patent for a stair-step lighting apparatus after Tivoli sued Tempo for infringement. The patent examiner rejected the claims after construing the term “inert to light” using a dictionary definition. The Board rejected this construction in favor of a definition given by Tivoli during prosecution of the application. The Board applied Tivoli’s definition and determined that the examiner’s rejections were improper, but cited to factual findings that were based on the examiner’s use of the wrong claim construction. The Board also prevented Tempo from raising additional arguments that the claims were anticipated because Tivoli appealed the examiner’s decision, but Tempo did not cross-appeal.

The Federal Circuit affirmed-in-part and vacated-in-part. The court agreed with the Board’s claim construction, because Tivoli amended the claims during prosecution to recite the “inert to light” limitation and provided a specific meaning at that time. This trumped the dictionary definition applied by the examiner. However, once the term was properly construed, the Board could no longer rely on the examiner’s factual findings “under the reversed—and substantially different—claim construction.” Slip op. at 8. The Board also erred by not considering Tempo’s additional arguments. A cross-appeal was not necessary, and to the contrary: “where claims have already been adjudicated invalid, a cross-appeal regarding additional invalidity arguments is generally improper.” Id. at 10 (citing Aventis Pharma S.A. v. Hospira, Inc., 637 F.3d 1341, 1343 (Fed. Cir. 2011)). Thus, Tempo did not waive its additional arguments. The court remanded to the Board with an admonition to “provide a speedy resolution” to the nearly decade-old reexamination. Id.at 11.


Process Invented Abroad and “Authorized” to be Reduced to Practice in the U.S. is Prior Art under § 102(g)(2)

Solvay S.A. v. Honeywell Int’l Inc., No. 2012-1660, 2014 U.S. App. LEXIS 2604 (Fed. Cir. Feb. 12, 2014) (Dyk, J.). Click here for a copy of the opinion.

Solvay sued Honeywell for infringement of a claim to a process for making refrigeration chemicals. After a jury trial, the district court entered judgment of invalidity against Solvay based on 35 U.S.C. § 102(g)(2). The jury found that earlier work by others “in this country” was invalidating prior art. Russian engineers first conceived the invention abroad, before Solvay did, and Honeywell then reduced the invention to practice in the U.S. by carrying out the process according to the engineers’ instructions. On appeal, Solvay argued that Honeywell’s activities did not “inure to the benefit of the inventor” because the Russian engineers did not expressly ask Honeywell to do the required work. According to Solvay, Honeywell’s use of the Russian process did not count, the alleged prior art was not made “in this country” under § 102(g)(2), and the judgment of invalidity should be reversed.

A divided panel of the Federal Circuit affirmed the invalidity judgment. The court disagreed with Solvay’s position that “inurement” requires an inventor to expressly request or direct a non-inventor to perform a reduction to practice of his invention. A request may be “implicit,” and inurement exists “if the inventor authorizes another to reduce his invention to practice.” Slip op. at 16. In this case, a research agreement between the Russian engineers and Honeywell authorized Honeywell to practice the invention and contemplated that Honeywell would do so. Thus, the Federal Circuit affirmed that “the process invented by the Russian engineers was made in this country when Honeywell successfully performed the process.” Id. at 17.

In dissent, Judge Newman criticized the majority for “creat[ing] a new class of secret prior art” and, in her view, converting the “private/secret duplication of [a] prior invention” into prior art “in this country.”


The Author

Joseph Robinson & Robert Schaffer

Joseph Robinson & Robert Schaffer  

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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