Federal Circuit Review - Provided by Patterson, Belknap, Webb & Tyler LLP
The following is a review of Federal Circuit intellectual property cases decided the week ending October 18, 2002.
ENTITLEMENT TO EARLIER FILING DATE; OBVIOUSNESS
In re Huston, No. 021048 (October 17, 2002)
Opinion by Dyk, joined by Mayer. Dissenting opinion by Prost.
The claims in dispute relate to sending advertising messages to a golfer using an electronic receiver (carried by the golfer) that includes a GPS unit. The Federal Circuit affirmed a Board of Appeals decision affirming an examiner's rejection of the claims as obvious.
A key issue in the case was whether the claims in dispute (which appeared in a cip application) were entitled to the filing date of the parent application. The parent application disclosed the GPSenabled receiver to be carried by the golfer, but did not expressly disclose transmitting "advertising information" to the receiver. Instead, the parent application referred to the transmission of "error correction information" and "other information." Huston argued that because "other information" is the genus of "advertising information," the claims in dispute should be entitled to the filing date of the parent application. The Federal Circuit disagreed, noting that: "Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed." http://www.fedcir.gov/opinions/021048.doc1048.doc
On the merits of the obviousness rejection, the Federal Circuit noted that the Board's decision "could have been clearer," but nevertheless held that "the Board's reasoning can be readily discerned" and "does not compel reversal." In dissent, Judge Prost countered that it was improper for the Court to "supply a reasoned basis for the agency's action that the agency
itself has not given," and urged that the case should be remanded to the Board.
The following is a review of Federal Circuit intellectual property cases decided the week ending October 25, 2002.
CLAIM CONSTRUCTION; METHOD CLAIMS
Schumer v. Laboratory Computer Systems, Inc., et al., No. 021100 (Fed. Cir. October 22, 2002). Opinion by Dyk, joined by Newman and Michel. Federal Circuit observed that this does not end the inquiry because "[a] question remains as to whether the claims should be interpreted to mean that the method must be capable of translating each of the three alternative variables."
At issue were several computer-related method claims. Finding error in the district court's claim construction, the Federal Circuit vacated summary judgments of noninfringement and invalidity, and remanded.
The principal claim construction issue was whether a method step that called for different computations to be performed depending on which of several, alternative forms of input was provided (i.e., "input A or input B or input C") must be construed to require the capability to respond to each of the alternative forms of input, or merely the capability to respond to at least one of them. The Federal Circuit chose the latter.
Noting that "we have consistently interpreted the word 'or' to mean that the items in the sequence are alternatives to each other," the
Acknowledging that "[i]f this were a product patent, the concept of capability would have relevance," the Federal Circuit nevertheless concluded that: "The method is performed if any of the three features of a coordinate system is translated, and thus, infringement occurs if any one of these translations is performed." http://www.fedcir.gov/opinions/021100.doc1100.doc