{"id":1888,"date":"2017-11-15T21:13:52","date_gmt":"2017-11-16T02:13:52","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1888"},"modified":"2018-01-01T21:38:09","modified_gmt":"2018-01-02T02:38:09","slug":"rule-of-reason-applies-to-priority","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1888","title":{"rendered":"Rule of Reason Applies to Priority"},"content":{"rendered":"

In Perfect Surgical Techniques, Inc., v. Olympus America, Inc.<\/a>, [2015-2043] (November 15, 2016), the Federal Circuit reversed the PTAB decision in an IPR invalidating claims 1, 4\u20136, 8, 9, 11, 12, 38, 41\u201344, 46, 47, and 49 of U.S. Patent No. 6,030,384.<\/p>\n

The Board determined that PST failed to antedate the prior art because it had not proven that the\u00a0inventor of the \u2019384 patent was reasonably diligent in reducing his invention to practice, and that the invention was anticipated or rendered obvious from the prior art.<\/p>\n

The Federal Circuit found that the\u00a0Board erroneously applied a heightened burden of proof which “infected” its analysis. The Federal Circuit said that the Board should have weighed evidence of priority of inventorship under a rule of reason.\u00a0\u00a0 Instead, the Board fixated on the portions of the critical period where PST did not provide evidence of\u00a0the inventor’s specific activities to conclude the exercise of diligence was not \u201ccontinuous.\u201d The Federal Circuit said that under a rule of reason analysis,\u00a0an inventor is\u00a0not required to corroborate every day or what was done.<\/p>\n

The Federal Circuit found that the Board compounded its error by summarily dismissing\u00a0the activities of the inventor’s attorney.\u00a0 An attorney\u2019s work in preparing a patent application is evidence of an inventor\u2019s diligence.\u00a0 The Federal Circuit further found that the Board\u2019s focus on gaps of inactivity also led it to\u00a0make fact findings unsupported by substantial evidence.<\/p>\n

The Federal Circuit instructed that on remand, the question before the Board is whether all of patent owner\u2019s evidence, considered as a whole and under a rule of reason, collectively corroborates the inventor\u2019s testimony that he worked reasonably continuously within the confines of his and his attorney’s\u00a0occupations to diligently finalize the patent application during the critical period.<\/p>\n

The claim construction issues revolved around the construction of \u201cperforated,\u201d in the\u00a0claim language \u201cwherein at least one of the jaws is perforated to permit the release of steam during use.\u201d The Board reasoned that the specification, which states \u201cthe jaws may be perforated or otherwise provided with passages,\u201d\u00a0 described passages as another form of perforations and did\u00a0not distinguish between these terms.\u201d Because of this equivalence between perforations and passages, the prior art disclosure of passages anticipated the claims, which required perforations.\u00a0 The Federal Circuit found that the Board used extrinsic evidence (a dictionary) to establish the equivalence of that perforations included\u00a0passages.\u00a0 The Federal Circuit agreed with the patent owner\u00a0 that\u00a0the description in the specification that the device \u201cmay be perforated or otherwise provided with passages\u201d evidences a difference in meaning between passages and perforations. The Federal Circuit said that\u00a0the specification\u2019s\u00a0separation of the terms perforated and passages with the\u00a0disjunctive phrase \u201cor otherwise\u201d makes clear that the\u00a0patentee intended that the term \u201cperforated\u201d is not the\u00a0same as \u201cpassages.\u201d The patentee claimed only jaws that\u00a0are \u201cperforated\u201d; this claim does not extend to passages.\u00a0In light of the intrinsic record, we conclude that the term\u00a0\u201cperforated\u201d is not coextensive with or the same as \u201cpassages.\u201d<\/p>\n

Thus the Board\u2019s finding that JP \u2019551 disclosed at\u00a0least one \u201cperforated\u201d jaw because JP \u2018551 referenced “a\u00a0passage” cannot be supported. The Federal Circuit\u00a0 vacate the Board\u2019s\u00a0decision invalidating claims 11, 38, 41\u201344, 46, 47, and 49\u00a0over JP \u2019551 and remanded for proceedings consistent with\u00a0this construction.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Perfect Surgical Techniques, Inc., v. Olympus America, Inc., [2015-2043] (November 15, 2016), the Federal Circuit reversed the PTAB decision in an IPR invalidating claims 1, 4\u20136, 8, 9, 11, 12, 38, 41\u201344, 46, 47, and 49 of U.S. Patent … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[59],"tags":[],"class_list":["post-1888","post","type-post","status-publish","format-standard","hentry","category-priority"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1888","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1888"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1888\/revisions"}],"predecessor-version":[{"id":1890,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1888\/revisions\/1890"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1888"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1888"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1888"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}