{"id":1986,"date":"2018-03-12T11:39:04","date_gmt":"2018-03-12T15:39:04","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1986"},"modified":"2018-03-25T12:11:29","modified_gmt":"2018-03-25T16:11:29","slug":"terminal-disclaimer-is-a-strong-clue-but-not-conclusive-proof-that-continuation-claims-are-not-patentably-distinct","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1986","title":{"rendered":"Terminal Disclaimer is a Strong Clue, But Not Conclusive Proof That Continuation Claims Are Not Patentably Distinct"},"content":{"rendered":"

In Simpleair, Inc. v. Google LLC<\/a>, [2016-2738] (March 12, 2018), the Federal Circuit vacated the district court’s dismissal under FRCP 12(b)(6) because the\u00a0district court erred by presuming that terminally disclaimed
\ncontinuation patents are patentably indistinct\u00a0variations of their parent patents without analyzing the\u00a0scope of the patent claims.<\/p>\n

This case is SimpleAir\u2019s fourth complaint\u00a0asserting infringement by Google Cloud Messaging services, this one involving U.S. Patent Nos. 8,639,838 and 8,656,048.\u00a0\u00a0The district court dismissed both complaints under\u00a0Rule 12(b)(6) as barred by claim preclusion and the Kessler\u00a0doctrine, reasoning that\u00a0patents shared the same\u00a0title and specification with previously adjudicated\u00a0continuation patents, and the filing of a terminal disclaimer
\nto overcome the PTO\u2019s obviousness-type double\u00a0patenting rejections indicated that the PTO believed the\u00a0content of the patents in suit to be patentably indistinct\u00a0from the earlier patents.<\/p>\n

The Federal Circuit agree that\u00a0agreed that claim\u00a0preclusion was not foreclosed because SimpleAir asserted\u00a0patents in this case that were not before the district court in the prior actions.\u00a0 However, the Federal Circuit found that the record before it\u00a0record before us wis not sufficient to sustain
\nthe district court\u2019s holding of claim preclusion.<\/p>\n

The Federal Circuit said that\u00a0it is the claims of the\u00a0patent which define the invention, and that the district court concluded that the underlying inventions were the same without ever\u00a0analyzing\u00a0the claims of any patent in making that conclusion.\u00a0 The Federal Circuit distinguished the situation of reexamined patents, where the claims in the reissued patent cannot be broader than the claims in the original patent.\u00a0 In a continuation, even a continuation with a terminal disclaimer, the claims can be broader.<\/p>\n

The Federal Circuit held that\u00a0where different patents are asserted in a first
\nand second suit, a judgment in the first suit will trigger\u00a0claim preclusion only if the scope of the asserted patent\u00a0claims in the two suits is essentially the same.\u00a0 However Federal Circuit case law\u00a0forecloses the
\ninference that filing a terminal disclaimer functions as an\u00a0admission regarding the patentability of the resulting\u00a0claims.<\/p>\n

The Federal Circuit said that the filing of a terminal disclaimer is a strong indicator that the claims are not patentably distinct, but something more is still required:<\/p>\n

Thus, a terminal disclaimer is a strong clue that a patent\u00a0examiner and, by concession, the applicant, thought\u00a0the claims in the continuation lacked a patentable distinction\u00a0over the parent. But as our precedent indicates, that\u00a0strong clue does not give rise to a presumption that a\u00a0patent subject to a terminal disclaimer is patentably
\nindistinct from its parent patents. It follows that a court\u00a0may not presume that assertions of a parent patent and a\u00a0terminally-disclaimed continuation patent against the
\nsame product constitute the same cause of action. Rather,\u00a0the claim preclusion analysis requires comparing the\u00a0patents\u2019 claims along with other relevant transactional\u00a0facts.<\/p><\/blockquote>\n

Claim preclusion implicates both the weighty policies
\nof judicial economy and fairness to parties.\u00a0 \u00a0It\u00a0\u201cencourages reliance on judicial decisions, bars vexatious\u00a0litigation, and frees the courts to resolve other disputes.\u00a0 However, because\u00a0claim preclusion shields the fraud and the cheat as well\u00a0as the honest person, it is to be invoked only
\nafter careful inquiry.<\/p>\n

The Federal Circuit also found that the Kessler Doctrine does not unless (and until) the claims have been found to be patentably distinct.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Simpleair, Inc. v. Google LLC, [2016-2738] (March 12, 2018), the Federal Circuit vacated the district court’s dismissal under FRCP 12(b)(6) because the\u00a0district court erred by presuming that terminally disclaimed continuation patents are patentably indistinct\u00a0variations of their parent patents without … 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":[49],"tags":[],"class_list":["post-1986","post","type-post","status-publish","format-standard","hentry","category-collateral-estoppel"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1986","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=1986"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1986\/revisions"}],"predecessor-version":[{"id":1987,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1986\/revisions\/1987"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1986"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1986"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1986"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}