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 ======Patent News:=======
+===== En banc denied in Boehringer - § 121 double patenting safe harbor maintained (05/07/10) =====
+The CAFC recently {{:legal:double_patenting:boehringer_-_09-1032o.pdf|denied}} a motion for an en banc rehearing of the {{:legal:double_patenting:boehringer_-_09-1032.pdf|previous decision}} by the CAFC, which upheld the safe harbor provisions of 35 U.S.C. § 121.  In this case, of a related set of three patent applications the patentee's first application was subject to a ten-way restriction by the PTO.  In two subsequent divisionals, the patentee included multiple patentably distinct inventions set forth in the restriction requirement of the first application.  The PTO did not issue restriction requirements in the two divisionals and each issued as a patent claiming multiple distinct inventions identified in the PTO's initial restriction requirement.  The district court held that that the patentee, Boehringer, could not seek shelter in § 121's safe-harbor provision and invalidated the third patent for obviousness-type double patenting based on the second patent.  The CAFC panel decision reversed the district court, ruling that the
+  -  patentee did not err in combining independent and distinct inventions in subsequent divisional applications, and
+  - the patentee's motivations for filing subsequent divisional applications were irrelevant so long as the later-filed claims could have been filed in the initial application absent the restriction requirement.
+  * [[po>patent/2010/01/section-121-safe-harbor-against-double-patenting-invalidation.html|Summary, discussion]]
+===== CAFC:  $500 fine per falsely marked article(05/03/10) =====
+**Marking:**  A false marking claim under 35 U.S.C. §292 requires an intent to deceive the public, which is found when "a party acts with sufficient knowledge that what it is saying is not so and consequently that the recipient of its saying will be misled into thinking that the statement is true."  In //{{:legal:marking:forest_group_09-1044.pdf|Forest Group v. Bon Tool}}//, the CAFC agreed with a lower court ruling that Forest lacked requisite knowledge to falsely mark prior to November 15, 2007, when it received a second summary judgment determination of non-infringement in a separate case case that its S2 stilts were not covered by the ’515 patent.  The Court, however, vacated the lower court's fine of a mere $500 for a single decision to false mark, stating, "The plain language of the statute does not support the district court’s penalty of $500 for a decision to mark multiple articles. Instead, the statute’s plain language requires the penalty to be imposed on a per article basis."
+  * [[http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=5645515.PN.&OS=PN/5645515&RS=PN/5645515|Patent In Suit]]
+  * [[pb>archives/2010/01/08/false-patent-marking-roulette-wheel/|Summary, analysis]]
+  * [[pp>2009/12/stilted.html|Excerpts]]
+  * [[po>patent/2010/01/false-marking-calculating-damages-part-i.html|Summary, discussion]]
+===== En Banc CAFC reaffirm written description doctrine (03/28/10) =====
+In //{{:legal:validity_and_enforceability:ariad_2008-1248.pdf|Ariad Pharmaceuticals et al v. Eli Lilly}}// the CAFC upheld a separate written description requirement.  The {{:legal:validity_and_enforceability:6410516_ariad_s_patent.pdf|patent at issue}} relates to a method for inhibiting an intracellular mechanism for expressing genes driving an immune response.  Ariad and its co-plaintiffs sued Eli Lilly for infringement of claims  80, 95, 144, and 145 of the patent.  A jury returned a verdict that the claims were valid (meeting the enablement and written description requirments) and infringed.  Eli Lilly appealed the Federal Circuit, which reversed the jury's verdict of validity on grounds that the patent fails to set forth an adequate written description in a decision rendered in April 2009 ((Ariad, 560 F.3d at 1369)).  The CAFC agreed to rehear en banc to answer the following two questions:
+  - Whether 35 U.S.C. §112, paragraph 1, contains a written description requirement separate from an enablement requirement?
+  - If a separate written description requirement is set forth in the statute, what is the scope and purpose of that requirement?
+In answering the first question, the CAFC held that the plain meaning of the statute does not limit the written description requirement solely to requiring enablement.  Stated the court:  "If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written differently"  and "Finally, a separate requirement to describe one’s invention is basic to patent law.  Every patent must describe an invention.  It is part of the quid pro quo of a patent. . . ."  The CAFC cited the Supreme Court cases //Schriber-Schroth// ((//Schriber-Schroth Co. v. Cleveland Trust Co.//, 305 U.S. 47 (1938) )), //Gill v. Wells// ((89 U.S. (22 Wall.) 1 (1874) )), and //Festo// ((//Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.//, 535 U.S. 722, 736 (2002) )).
+With regard to the **scope** of the requirement, the court held that:
+  - "the test for sufficiency is whether the disclosure of the application relied upon reasonably conveyed to those skilled in the art that the inventor had posession of the claimed subject matter as of the filing date."
+  - "the specification must describe an invention understandable to that skilled artisan and show that the invention actually invented the invention claimed."
+  - "the written description requirement does not demand either examples or an actual reduction to practice"
+  - "actual 'posession' or reduction to practice outside oft he specification is not enough."
+With regard to the **purpose** of the requirement, the court held that:
+  - "requiring a written description of the invention plays a vital role in curtailing claims that do not require undue experimentation to make and use, and thus satisfy enablement, but that have not been invented, and thus cannot be described."
+  - "The written description requirement also ensures that when a patent claims a genus by its function or result, the specification recites sufficient materials to accomplish that function--a problem that is particularly acute in the biological arts.
+The court does not sympathize with the impact of the written description requirement on research institutions (such as co-plaintiff MIT):
+  - "Patents are not awarded for academic theories, no matter how groundbreaking or necessary to the later patentable inventions of others.  '[A] patent is not a hunting license.  It is not a reward for the search, but compensation for its successful conclusion.'"
+  - "The goal is to get the right balance, and the written description doctrine does so by giving the incentive to actual invention and not 'attempt[s] to preempt the future before it has arrived. [...] As this court has repeatedly stated, the purpose of the written description requirement is to 'ensure that the scope of the right to exclude, as set forth in teh claims, does not overreach the scope of the inventor's contribution to the field of art as described int he patent specification."
+  * [[pb>archives/2010/03/24/ariad-en-banc-written-description-requirement-is-separate-from-enablement/ | Summary]]
+  * [[pp>2010/03/enabling_written_description.html | Excerpts, commentary]]
+  * [[po>patent/2010/03/guest-post-ariad-v-lily-choosing-to-not-disrupt-the-settled-expectations-of-the-patent-community.html | Analysis, discussion]]
 ===== BPAI "Bilskis" Apparatus and Beauregard claims (01/27/10) =====
@@ Line 39: / Line 87: @@
 **Newman Dissents:**  Judge Newman argues that the Settlement Agreement identifies litigation that was pending at the time of the Contribution Agreement, and could have been used to identify which patents are "related" to the litigations.  Since the technology of the patents asserted in prior litigations is not related to the patents asserted here, the patents clearly should not have been excluded, and the dismissal should have been reversed.  Newman presents several other rationales for reversing the dismissal.
-  * [[pp>blog/2009/12/proviso_surgery.html|Excerpts, commentary]]
+  * [[pp>2009/12/proviso_surgery.html|Excerpts, commentary]]
@@ Line 159: / Line 208: @@
   * [[http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=5632307.PN.&OS=PN/5632307&RS=PN/5632307|Patent in suit]]
-  * [[pp>http://2009/03/leaky.html|Summary with excerpts]]
+  * [[pp>2009/03/leaky.html|Summary with excerpts]]
   * Hal Wegner's take: \\ {| class="inline"
 | "//Clock Spring// is a useful reality check for applicants who wish to delay filing under the guise of “experimental use”.  A tour de force treatment of the limitations of this doctrine may be found at pages 12-15 of the opinion."
@@ Line 201: / Line 250: @@
   * {{legal:statutory_subject_matter:bilskipetition.pdf|Bilski's Petition (250 pages, 668 KB)}}
     * {{legal:statutory_subject_matter:bilski_petition_ps_.pdf|Paper-saver copy (125 pages, 984 KB)}}
-  * 8-) **//See// the [[:legal:statutory_subject_matter:bilski|comprehensive Bilski page]].**
+  * 8-) **//See// the [[:legal:statutory_subject_matter:bilski:|comprehensive Bilski page]].**
   * [[po>patent/2009/01/bilski-petitions-the-supreme-court-to-decide-issues-of-patentable-subject-matter.html | Announcement, associated documents, discussion]]
@@ Line 220: / Line 269: @@
 > One hundred eighty years ago the Patent Act of 1839 established the ground rules for judicial review of Patent Office denials of patentability. A strict standard was established that the reviewing court should only review the decision below and never on a de novo basis impose a new ground to deny patentability.
-  * [[pp>blog/2009/01/mental_method.html | Summary, exceprts]]
+  * [[pp>2009/01/mental_method.html | Summary, exceprts]]
-    * [[pp>blog/2009/01/rogue.html | Excerpts, discussion of Wegner's article]]
+    * [[pp>2009/01/rogue.html | Excerpts, discussion of Wegner's article]]
 ===== District Court in Delaware Sanctions Rambus for spoliation, declares Rambus' patents unenforceable (01/23/09) =====
@@ Line 229: / Line 278: @@
 > "the showing of bad faith is so clear and convincing that the showing of prejudice can be proportionally less.  The spoliation conduct was extensive, including within its scope the destruction of innumerable documents relating to all aspects of Rambus' buisness; when considered in light of Rambus' litigation conduct, the very integrity of the litigation process has been impugned.  Sanctions such as adverse jury instructions and preclusion of evidence are impractical, bordering on meaningless, under these circumstances and in the context of a typical trial.  Therefore, the court concludes that the appropriate sanction for the conduct of record is to declare the patents in suit unenforceable against Micron."
-  * [[http://www.delawarelitigation.com/2009/01/articles/other-court-decisions/delaware-decision-imposes-penalties-for-spoliation-of-evidence/|Article]]
+  * [[http://www.delawarelitigation.com/2009/01/articles/other-court-decisions/delaware-decision-imposes-penalties-for-spoliation-of-evidence/|Article]]ok
+  *

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