By Stephen B. Schott
USPTO Subject Matter Guidelines Updated
If you haven’t seen them, the USPTO published patentable subject matter hypotheticals, with an accompanying analysis. The PTO published these examples last year but recently added more examples that include a focus on bio-related technologies.
Courts Cannot “Factor Out” Functional Elements When Construing Design Patent Claims
Sport Dimension, Inc. v. Coleman Co., Inc. (Fed. Cir. April 2016)
For the 3rd time in a year, the Federal Circuit made it clear that while functional elements in a design patent are not protectable, when construing a design patent claim, courts cannot “factor out” or ignore functional elements as if they don’t exist.
The Court summarized this clearly: “[T]he armbands and side torso tapering serve a functional purpose, so the fact finder should not focus on the particular designs of these elements when determining infringement, but rather focus on what these elements contribute to the design’s overall ornamentation.”
Patentees Cannot File a Reexamination (or Reissue) to Avoid an Invalidity Judgment
Cardpool v. Plastic Jungle (Fed. Cir. April 2016)
The patentee filed for reexamination of its patent before the district court issued a final judgment. After the district court invalidated the patent’s claims, the USPTO issued a reexamination certificate amending the patent’s claims. The parties jointly moved for the district court to vacate its invalidity judgment but the district court refused and the Federal Circuit affirmed stating, “The Supreme Court counsels that “vacatur must be decreed for those judgments whose review is . . . ‘prevented through happenstance’—that is to say, where a controversy presented for review has ‘become moot due to circumstances unattributable to any of the parties.”
Claim Construction Required Even if Claim Term has Plain and Ordinary Meaning
Clare v. Chrysler Grp. LLC (Fed. Cir. April, 2016)
Even a simple claim term with a plain and ordinary meaning must be construed. Point finale.
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