Monthly Archives: March 2015

No Challenge Possible to PTO’s Revival of Application

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In Exela Pharma Sciences, LLC v. Lee, [2013-1206] (March 26, 2015) the Federal Circuit affirmed the dismissal of Exela’s challenge to the revival of SCR Pharmatop patent application that resulted in the issuance of U.S. Patent No. 6,992,218. It was undisputed that SCR Pharmatop failed to properly enter the U.S. National Phase by the 30 month deadline. SCR Pharmatop filed a petition to revive the application, stating that the delay was “unintentional,” using the form provided by the PTO for revival requests. The PTO granted the petition on April 25, 2003, and the application was duly examined, resulting in the ’218 patent. After being sued on the patent, Exela filed a petition in the PTO, under the APA and 37 C.F.R. §§1.181, 1.182, and 1.183, challenging the PTO’s revival of SCR Pharmatop’s application, arguing that “unintentional” delay was not an available ground for revival of a U.S. patent application claiming priority under the PCT-implementing statute as then in effect.  The PTO declined to consider Exela’s petition, stating that no statute or regulation authorizes third party challenge to a PTO ruling concerning revival of a patent application.  Exela brought an action in district court to review this determination, but it was dismissed the action as untimely.  The Federal Circuit affirmed the dismissal, but on the grounds that “PTO revival actions are not subject to third party challenge under the APA.”

This decision in effect completely insulates improper and even illegal action by the USPTO, not only can a third party not challenge the action in the Patent Office, but in view of the Federal Circuit’s decision in Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008), the party cannot raise it as a defense in an infringement action.

Every Term in a Claim Should be Given Meaning

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In Enzo Biochem Inc. v. Applera Corp., [2014-1321] (March 16, 2015), the Federal Circuit reversed the district’s courts’ claim construction, and thus the district court finding of infringement. At issue was the language “represents at least one component of a signaling moiety capable of producing a detectable signal.” The district court determined that this language encompassed a compound that was the entire signaling moiety. However, the Federal Circuit reversed for several reasons, including the fact that this construction improperly read out “component” form the claim language, citing Bicon, Inc., v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).

De Novo Review Where Claim Can Be Construed Using Canons of Construction from Instrinsic Reference

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Eidos Display, LLC, v. AU Optronics Corp., [2014-1254] (Fed. Cir. 2014), the Federal Circuit reversed summary judgment of invalidity of the claims for indefiniteness.  The Federal Circuit began its analysis by confirming that its review was de novo because the claims could be construed solely from the intrinsic evidence, citing Teva v. Sansoz.  The Federal Circuit said that to the extent the district court considered extrinsic evidence in its claim construction order or summary judgment order, that evidence is ultimately immaterial to the outcome because the intrinsic record is clear.

In its de novo review of the claims the Federal Circuit observed that the limitation at issue, “a contact hole for source wiring and gate wiring connection terminals” could require a single common or two separate holes, but found that the specification clearly indicated two holes.  First, the Federal Circuit noted that the there was no enabling disclosure of a single hole, and second the only disclosure was of two separate holes.

The Federal Circuit looked to the prosecution history of the parent application, citing Masco Corp. v. United States, 303 F.3d 1316, 1324 (Fed. Cir. 2002), and Elkay Mfg. Co. v. EbcoMfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999)that the prosecution history of a parent application may be considered  in construing claim terms.”  Observing that other claims contained this same limitation the Federal Circuit saw no reason to ascribe a different meaning to the same limitation in the current claim, noting claim terms are normally used consistently throughout the patent, so that the usage of a term in one claim can often illuminate the meaning of the same term in other claims.

Finally the circuit noted that descriptions of other unclaimed embodiments in the patent in suit supported the construction that separate holes were required, noting that the description of a word in the specification for a different structure can inform the meaning of the same word in the claim because “claim terms are normally used consistently throughout the patent,” citing Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1349–50 (Fed. Cir. 2012).

The Federal Circuit rejected appellee’s argument that it was rewriting the limitation, noting that determining how a person of ordinary skill in the art would understand  the limitation, however, is different from rewriting the limitation.