Tag Archives: USPTO Director

Patent Applicant’s Claim Takings Claim Barred by Res Judicata

Patent, Patent Cases 2005

PatentlyOImage027Hornback v. U.S. (Fed. Cir. 2005).

Back in 1986, Mr. Alton Hornback applied for a patent on a error slope sensor for a missile.  The invention was found to be patentable but was withheld from issuance because of a secrecy order under 35 USC 181. The secrecy order was renewed annually until 1999, and the patent finally issued in June of 2000.

Hornback requested compensation for the delay in issuance, arguing that it was a taking.  Because Hornback had argued the takings issue in a previous case, the CAFC found that his claim was now barred by res judicata.

Hornback argued that the present case raised new issues because the military had de-classified then reclassified the technology in the interim.  The CAFC rejected that argument, however, finding that the classification action internal to the military did not alter his rights — “because only the Commissioner of Patents may rescind a secrecy order.”

In addition, the Appellate Panel agreed that the Court of Federal Claims “does not have subject matter jurisdiction of an adverse ruling of the PTO director.” 

28 U.S.C. §1361 vests “original jurisdiction” for the issuance of mandamus orders in the district courts, authorizing the district court to hear any action “to compel an officer or employee of the United States or any agency thereof to perform a duty owed to the plaintiff.”

Dismissal affirmed.

Aside: In 1996, Hornback made another precedent when the CFC held that a pro se patent applicant without legal training is not held to the same standard as trained counsel.

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Plaintiff’s Misconduct Results in a Loss of Damages and a New Trial

Patent,

PatentlyO062

Schreiber Foods v. Beatrice Cheese (Fed. Cir. 2005).

Schreiber sued Keuster for infringement of a patented method of slicing and storing cheese.  (U.S. Patent No. 5,701,724).  At trial, a Schreiber director falsely testified that Schreiber Foods owned the patent that had actually been assigned to a third party during the litigation. After trial and verdict, Schreiber’s trial counsel assisted Schreiber in re-acquiring the patent, but did not disclose the assignment to the district court or to opposing counsel.

Upon a Rule 60(b) motion to vacate the judgment, the district court found that Schreiber’s lack of ownership during the litigation deprived Schreiber of standing and rendered the suit moot — thus voiding the judgment.  In the alternative, the district court found that the plaintiff’s litigation conduct constituted fraud, misrepresentation or misconduct.

On appeal, the CAFC first found that the case was not moot, because Schreiber had standing when the trial started (before the original assignment) and had now re-acquired standing.

A temporary loss of standing during patent litigation can be cured before judgment.

On the issue of fraud, the CAFC agreed that there “can be no claim that Schreiber’s conduct is not sanctionable.”

Quite apart from whether Schreiber’s misstatements in the period before September 1998 were sanctionable, the conduct of Schreiber and its counsel after September 1998, when counsel became aware of the assignment of the ’860 patent, was plainly sanctionable. Once counsel became aware that highly material false statements had been made by a witness, in pleadings submitted to the court and in response to discovery requests, and that highly material documents had not been produced as required, Schreiber and its counsel were under an obligation to promptly correct the record.

The CAFC therefore held that the district court properly vacated the entire judgment and that a new trial on all issues is the appropriate sanction.  

File Attachment: Schreiber Foods v. Beatrice Cheese.pdf (67 KB)

2005 Business Methods USPTO Partnership Meeting

Conference or CLE, Patent

In May 2005, the USPTO will host its Spring 2005 Business Methods Customer Partnership Meeting.  This forum will likely provide a valuable opportunity for patent prosecutors to learn what goes on at TC 3600 beyond the MPEP. 

The director and managers of of the Business Methods workgroup will be there for an informal partnership meeting to discuss topics such as public pair, quality initiatives, the determination of statutory subject matter, and other topics specific to business methods.

DATES AND LOCATION: The partnership meeting will be held on Wednesday May 4, 2005, from 1:00 P.M.-5:00 P.M. at the USPTO MADISON AUDITORIUM, Concourse Level, Madison Building, 600 Dulany Street, Alexandria, VA 22313.

Attendance reservations are taken on a first-come first-served bases.  However, the USPTO may limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms should designate an official representatives. No one will be permitted to attend without an accepted attendance request.

To attend, contact Joe Thomas via FAX: (703) 746-5897, or e-mail: joseph.thomas@uspto.gov by April 20, 2005. 

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