Tag Archives: Historical Cases

Old Dog, New Tricks: Government Defends 200-Year-Old ODP Doctrine Even Under Modern Statutes

August 22, 2024Patentdouble patenting, Federal Circuit, Historical Cases, paid, patent prosecution, PTA, Supreme Court, USPTODennis Crouch

by Dennis Crouch

The debate over obviousness type double patenting continues. Most recently, the U.S. Government has filed its brief in opposition to certiorari in Cellect v. Vidal.

In its decision, the Federal Circuit ruled that the Congressionally mandated "patent term guarantee" that adjusts patent term to account for undue USPTO delay (known as PTA) triggers a risk that a later-expiring patent will be invalidated due to obviousness-type double patenting (ODP). The Government brief consistently defends and agrees with the CAFC's decision -- arguing primarily (1) that ODP is an ancient patent tradition (much like eligibility) and (2) applying ODP to PTA is supported by the statute.

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Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness

May 21, 2024Patentanalogous art, design patent, en banc, Graham v. John Deere Co., Historical Cases, KSR, obviousness, paid, Whitman SaddleDennis Crouch

by Dennis Crouch

In a highly anticipated en banc decision, the Federal Circuit has overruled the longstanding Rosen-Durling test for assessing obviousness of design patents. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc). The court held that the two-part test's requirements that 1) the primary reference must be "basically the same" as the claimed design, and 2) any secondary references must be "so related" to the primary reference that features from one would suggest application to the other, "impose[] limitations absent from § 103's broad and flexible standard" and are "inconsistent with Supreme Court precedent" of both KSR (2007) and Whitman Saddle (1893). Rejecting the argument that KSR did not implicate design patent obviousness, the court reasoned that 35 U.S.C. § 103 "applies to all types of patents" and the text does not "differentiate" between design and utility patents. Therefore, the same obviousness principles should govern. This decision will generally make design patents harder

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Without Undue Experimentation vs Without Any Experiments

April 26, 2024PatentAmgen Inc. v. Sanofi, Damages, Enablement, Historical Cases, paid, patent law, Section 112(a), Wood v. UnderhillDennis Crouch

by Dennis Crouch

I was rereading the Supreme Court's recent enablement decision of Amgen Inc. v. Sanofi, 598 U.S. 594 (2023) and was struck by the Supreme Court's statement that its 19th Century decision of Wood v. Underhill, 46 U.S. 1 (1847) "establish[ed] that a specification may call for a reasonable amount of experimentation to make and use a patented invention." This statement from Amgen is surprising because Chief Justice Taney's decision in Wood includes a seemingly contrary statement that bars any experimentation

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Seeking Clarity on Comparison Prior Art: Seirus Petitions Supreme Court in Heat Wave Design Patent Dispute

April 20, 2024Patentcomparison prior art, design patent, design patent infringement, Historical Cases, paid, patent law, Supreme CourtDennis Crouch

by Dennis Crouch

Seirus has petitioned for writ of certiorari in its long-running design patent dispute with Columbia Sportswear. The petition asks two questions related to the comparison process for design patent infringement -- in particular, the questions focus on what can qualify as "comparison prior art" used to provide context for the infringement analysis.

Questions presented:

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Patentee’s Unclean Hands

April 15, 2024Patentequitable defense, Historical Cases, Inequitable Conduct, litigation misconduct, obviousness, paid, patent law, unclean handsDennis Crouch

by Dennis Crouch

The Federal Circuit's new decision in Luv'N'Care, Ltd. (LNC) v. Laurain and EZPZ, relies on the doctrine of unclean hands to deny relief to the patentee (Laurain and EZPZ), affirming the district court's judgment. The appellate panel also vacated and remanded the district court's finding that LNC failed to prove the asserted patent is unenforceable due to inequitable conduct during prosecution, as well as its grant of summary judgment one of the asserted patents was invalid as obvious. U.S. Patent No. 9,462,903. The case here involves bowls/plates attached to a mat to help avoid spills and for easy cleanup. 22-1905.OPINION.4-12-2024_2300689.

Unclean Hands: The doctrine of unclean hands is an equitable defense that bars a party from obtaining relief when they have engaged in misconduct

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The Quest for a Meaningful Threshold of Invention: Atlantic Works v. Brady (1883)

March 26, 2024PatentHistorical Cases, inventorship, obviousness, paid, patent eligibility, patent law, Supreme Court PrecedentDennis Crouch

by Dennis Crouch

My recent discussion of Vanda v. Teva references the landmark Supreme Court case of Atlantic Works v. Brady, 107 U.S. 192 (1883). I thought I would write a more complete discussion of this important historic patent case.

Atlantic Works has had a profound impact on the development of patent law, particularly in shaping the doctrine of obviousness, but more generally providing theoretical frameworks for attacking "bad patents." As discussed below, I believe the case also provides some early insight into the new AI inventorship dilemma.

The case addressed the validity of a patent granted to Edwin L. Brady for an improved dredge boat design. The Supreme Court ultimately reversed the lower court's decision upholding the patent and found instead that Brady's claimed invention lacked novelty and did not constitute a patentable advance over the prior art.