Anticipate This!™ | Patent and Trademark Law Blog

Medtronic, Inc. v. Guidant Corporation, et al.

Posted in Opinion Commentary by Jake Ward on October 25, 2006

Unmistakable assertions made in support of patentability can give rise to a surrender for purposes of the recapture rule. 

(Fed. Cir. 2006, 05-1515)

Medtronic alleged that Guidant’s Reissue Pat. No. 38,119 (the RE119 patent) was invalid for reason of recapturing surrendered subject matter.  On appeal from the district court (D. Del) judgement that RE119 was not invalid, the CAFC affirmed.

The technology at issue relates to a method and apparatus for treating ventricular asynchrony, a condition in which a person has a defect in his or her heart valve that causes the heart ventricles to contract at different times.  In essence, the invention was a bi-ventricular pacer that continually senses the activity of both the left and right ventricles, and when activity is sensed in either ventricle the device immediately electrically paces the other or both ventricles.

In amending the original claims upon reissue, Guidant had asserted that it had claimed less than it had a right to and that the claims indavertently did not include two particular embodiments (unconditional embodiment and only one sensing electrode embodiment).  Medtronic argued that both embodiments were recaptured improperly because they were surrendered by amendment and/or argument in the original prosecution.  

Reissue proceedings cannot be used to obtain subject matter that could not have been included in the original patent.  The “recapture rule” prevents a patentee from regaining, through reissue,  subject matter that was surrendered during prosecution of  the original patent in an effort to obtain allowance of original claims.  When a surrender of subject matter is considered,  the courts look to the prosecution history for arguments and changes to the claim made in an effort to overcome  a rejection.  “Unmistakable assertions made to the Patent Office in support of patentability can give rise to a surrender for purposes of the recapture rule.”

In it’s analysis, the CAFC determined that the application as originally filed did include the unconditional embodiment, but that the Examiner’s amendment adding the embodiment was not prompted by a rejection.  Also,  Guidant did not unmistakeably surrender the unconditional embodiment by argument.  With respect to the “only one sensing electrode” embodiment, the CAFC agreed that the application as originally filed did not include the embodiment (i.e.the claims could not be recaptured) and that there was no unmistakable assertion in support of patentability that invalidates the reissue claims drawn to the embodiment.  Thus, the holding of the district court was affirmed. 

In dissent, Judge Dyk states that the characterization of the language changes as “minor wording changes” on its face does not demonstrate a concern with patentability.  However,  he asserts that the amendments were not, in fact, minor wording changes, and that in light of the prosecution history they were plainly directed to patentability.  Accordingly, Judge Dyk would find that the recapture of the unconditional embodiment was improper.

They Invented What? (No. 21)

Posted in They Invented What? by Jake Ward on October 25, 2006

JW Note:  In light of the upcoming Halloween, I considered this an appropriate “TIW?”.  Enjoy!

U.S. Pat. No. 6,725,510:  Inclining coffin.


What is claimed is:

1. A coffin, comprising: a pair of longitudinally extending side walls, each having a top edge and a lower edge, a pair of end walls extending substantially perpendicularly between the side walls, the side walls and end walls together defining an internal volume for containing a deceased person, the side walls divided transversely by a seam to define a first longitudinal portion and a second longitudinal portion, the top edge and lower edge are substantially planar between the first longitudinal portion and second longitudinal portion when the coffin is selectively in a planar position; a pair of inclination hinges, each mounted at the top edge between the first longitudinal portion and a second longitudinal portion, the inclination hinges allow the first longitudinal portion to enter an inclined position wherein the first longitudinal portion is inclined with respect to the second longitudinal portion, creating an angular gap with an origin at the top edge; a bracing assembly for selectively maintaining the first longitudinal portion in the inclined position; and a mechanism for selectively concealing the angular gap.

2. The coffin as recited in claim 1, wherein the mechanism for selectively concealing the angular gap are bellows mounted between the first longitudinal portion and second longitudinal portion at the seam therebetween.

3. The coffin as recited in claim 2, wherein each of the side walls has an inner side wall and an outer side wall, and defines a hollow that is open at the seam; wherein the bracing assembly extends within the hollow and is attached to both the first longitudinal portion and second longitudinal portion; and wherein the bellows extend between the outer side walls adjacent the seam to conceals the hollow and thereby conceal the bracing assembly extending within the hollow and between the first and second longitudinal portions.

4. The coffin as recited in claim 3, further comprising a pair of lower brackets, extending against the lower edge between the first and second longitudinal portions when the coffin is in the planar position, for selectively preventing the first longitudinal portion from inclining during transport of the coffin.

5. The coffin as recited in claim 4, wherein the lower bracket is rigidly attached to one of the first and the second longitudinal portions, and is selectively attachable to the other of the first and second longitudinal portions once the first longitudinal portion has been lowered to the planar position to facilitate safe transport of the coffin.

Dystar Textilfarben GMBH & Co Deutschland KG v. C.H. Patrick, Co., et al.

Posted in Opinion Commentary by Jake Ward on October 13, 2006

The Claimed Subject Matter Was Obvious as It Was The Work of a Skilled Chemist, Not of an Inventor. 

(Fed. Cir. 2006, 06-1088)


Dystar originally sued Patrick for allegedly using Dystar’s patented process of dyeing yarn  (U.S. Pat. No.5,586,992 or the ‘992 patent) .  Also a party was Bann Quimica (“Bann”), who manufactured and sold the dye to Patrick.  On appeal from the district court (D.S.C), Patrick and Bann challenged the finding of infringment and the refusal of the district court to hold the claims invalid for lack of enablement, anticipation or obviousness.  After a detailed discussion of obviousness standards, the CAFC reversed and found Claims 1-4 of the ‘992 patent invalid as obvious.

The technology at issue relates to a process for dyeing textile materials with catalytically hydrogenated leuco indigo (a water-soluble white form of indigo pigment).  With respect to the obviousness argument (my exclusive focus for the purposes of this summary) Bann argues the claims are obvious based on the combined Brochet, Wimmer (BASF), and Chaumat (BASF) patents.  In particular, the critical issue was whether stabilizing catalytically reduced leuco indigo in solution form, rather than in powder form coated with molasses, for example, renders the claimed process nonobvious to one of ordinary skill in the art?

First, the CAFC reiterated the policy behind the TSM test.  The TSM test “prevent[s] statutorily proscribed hindsight reasoning when determining the obviousness of an invention.”  Furthermore, the CAFC repeated the earlier theme from Alza v. Mylan that “the suggestion test is not a rigid categorical rule.”  The motivation does not need to be in the references, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.  The suggestion to combine need not be express, but may come from the prior art as filtered through the knowledge of one skilled in the art (a PHOSITA).

The CAFC characterized disagreement over the relevance of prior art as a disagreement over the level of ordinary skill in the art.  The CAFC also disagreed with the district court jury that the PHOSITA was a dyer with no knowldge of chemistry; instead finding that substantial evidence supported a  PHOSITA having higher skill in the art than just “flipping the switches,” for example knowledge of chemistry and systems engineering.

Using this understanding of the PHOSITA, the CAFC determined that a dyeing process designer would have been aware that reducing leuco indicgo in-house was time consuming, expensive and environmentally undesirable, and that buying pre-reduced indigo would be a better option.  From his chemistry background, he would have known from Brochet and Chaumat how to stabilize leuco indigo solution and devise a “cheaper, faster, and more convenient” dyeing process.  The use of vacuum packaging, also, was merely the exploitation of a well-known principle, thus making the subject matter of the patent the work of a skilled chemist and not of an inventor.

It is interesting to note that Ag Pro, Inc. v. Sakraida and Anderson’s -Black Rock, Inc. v. Pavement Salvage Co., two opinions of particular relevance to the upcoming KSR v. Teleflex case, were discussed by the CAFC here.  From Sakraida, the court noted that there is no need for “evidence” of a motivation to combine a prior art reference with a universally-known physical principle.  And from Anderson’s-Black Rock, the court stated that no explicit suggestion to combine references is necessary if the invention merely improves the efficiency of an already-known process through the use of another already-known method – both of which would have been common knowledge to ordinary artisans in the field of the endeavor.

JW Note:  The CAFC appears to be using this case to bolster its arguments FOR the so-called teaching-suggestion-motivation (TSM) test for obviousness, in light of the upcoming Supreme Court consideration of KSR v. Teleflex.   Practically speaking, however, this opinion is just one of a line of recent opinions by the CAFC where the court provides rationale for why TSM is a “good” test.   See, for example,  Alza Corporation v. Mylan Laboratories, Inc., et al., Ormco Corporation, et al. v. Align Technology, Inc. and In re Leonard R. Kahn.

New Firm – Fraser Martin & Miller, LLC

Posted in Practice Commentary by Jake Ward on October 13, 2006

Remember my earlier post about being too busy to post?  Well, I have recently decided to withdraw from the law firm of Harness Dickey & Pierce (having a brand new website today, by the way).  Starting Monday, October 16th, I will be continuing my practice at the law firm of Fraser Martin & Miller, located outside of Toledo, OH.

I plan to continue blogging patent and IP law, and hopefully for you, my definitely-not-captive audience, this professional transition will not signifcantly affect the frequency of my posts.  However, I ask for your patience during this transition. 

If you need other reading material, might I suggest The Fire of Genius?  I find this patent law blog to be an excellent source of commentary, and entertaining to boot!

JW Note – I also give The Fire of Genius my props as it is one of the few patent law blogs currently listing on the blogroll.  Thanks JSM!

A Statue for Toulmin.

Posted in General Commentary by Jake Ward on October 11, 2006


In the small city of Springfield, Ohio, now stands an 8-foot statue dedicated to the Wright Brother’s patent attorney, Harry Toulmin.  Mr. Toulmin was the patent lawyer who prepared and prosecuted the patent for Wilbur and Orville Wright’s flying machine . . . yes, the original airplane.

According to this article at, Toulmin helped the Wright brothers apply for five patents, including the 1906 flying machine’s patent (U.S. Pat. No. 821,393 or the ‘393 patent).  Other Wright patents also include U.S. Pat. Nos. 908,929987,662, 1,075,533, 1,122,348, 1.504,663, and 1,523,989,

The above article fails to mention, however, that the brothers only turned to Toulmin after the original application they had drafted themselves was rejected by the USPTO.  The ‘393 patent drafted by Toulmin had broad claims covering methods of controlling a flying machine, regardless of whetherthe machine was powered.  In particular, the patent described a system that allowed the aircraft to be controlled in flight, and specifically a feature like ailerons allowing lateral control. 

Toulmin also played a key role in the more than 20 years of fierce legal battles over the Brother’s patents.    In particular, in 1908 the Wright’s had warned Glenn Curtiss, who had built a large manufacturing center for aircraft, not to fly or sell aircraft that used ailerons. Curtiss refused to pay license fees to the Wrights and sold a plane to the Aeronautic Society of New York in 1909. The Wrights then filed a lawsuit, beginning a years-long legal conflict that ended in January 1914  when a U.S. Circuit Court of Appeals upheld the verdict in favor of the Wrights.  See this Wikipedia article for more information.

The Toulmin sculpture is stationed across the street from an office building Toulmin occupied after moving his patent law practice from Washington in 1886.  Apparently, Springfield officials also plan to erect statues of Orville and Wilbur Wright.  I think the homage paid to Toulmin here is fitting, as the collaboration between an inventor and a patent attorney can often, and particularly in this instance, result in a patent of broader value than even the inventor may have realized.

KSR International Co. v. Teleflex, Inc., et al. – Round Two Briefs

Posted in General Commentary by Jake Ward on October 11, 2006

Per usual, Patently-O is on the ball and has provided commentary and links to documents for KSR v. Teleflex (now with Round Two briefs)

The blog is so good, in fact, Dennis is one day ahead of us all!  See below.

date stamp

In all honesty, this is a great discussion and Patently-O should be commended for providing such a concise but thorough compilation of KSR v. Teleflex information . . . even if Dennis occasionally has some time stamp issues!

They Invented What? (No. 20)

Posted in They Invented What? by Jake Ward on October 11, 2006

U.S. Pat. No. 3,150,641:  Dust cover for dog.


Having described my invention, what I claim and desire to secure by Letters Patent is:

          1. A pliable plastic cover of the character described, comprising a body portion, terminating at one end in a hood-like portion arranged to cover a substantial portion of the head of an a[n]imal, said hood portion having an opening therein, bound with an elastic element, the opposite end of said body porition having an extension for receiving the tail of an animal, reinforced leg poritions depending from said body portion, a longitudinal opening in said body portion, a slide fastener for closing said longitundinal openeing, and a plurality of vent elements arranged in spaced relation in said body portion and said leg portions.

More of the Same, Yet Again.

Posted in General Commentary by Jake Ward on October 10, 2006

A few more repeats of earlier posts (worthy, I think, of spotlighting once again).  Enjoy!

          1.)  SARPABR – Add it to your patent vocabulary?

          2.)  200 Year Terms?

          3.)  Arbitrary and Capricious.