Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 203)

Posted in They Invented What? by Jake Ward on May 27, 2011

U.S. Pat. No. 4,922,921: Device for testing one’s breath.

I claim:

1. A device for use in testing one’s breath comprising a face mask adapted to fit over the nose and mouth of a user, having an edge contoured to sealably engage the user’s face under manual pressure, an upper portion of said edge formed to be disposed over the bridge of the user’s nose, a lower portion of said edge formed to be disposed below and adjacent the user’s lower lip, said mask having a nostril region disposed below said upper edge portion in the vicinity of the user’s nostrils, said mask being formed with at least one aperture therethrough between said nostril region and said upper edge portion whereby to provide at least one air escape passageway, and a storage space sump below said lower edge portion with unobstructed direct access from said sump to said nostril region.


Therasense, Inc. v. Becton, Dickinson and Co.

Posted in Opinion Commentary by Jake Ward on May 25, 2011

CAFC Endorses a “But-for” Standard for Materiality, and a “Knowing and Deliberate” Standard for Intent to Deceive, in Establishing Inequitable Conduct as a Defense to Patent Infringement.

(CAFC 2011, Appeal 2008-1511)

The en banc CAFC decision in Therasense v. Becton was rendered today. The 6-1-4 opinion appears to severely limit the activities that rise to the level of “inequitable conduct” for the purpose of invalidating a patent. Specifically, the court endorsed a “but-for” standard for materiality, and a “knowing and deliberate” standard for intent to deceive. The court appears to be moving away from the former “sliding scale” test for inequitable conduct, which provided that a greater showing of materiality permitted a lesser showing of intent to deceive.

The full opinion may be read by clicking the above link.  The holding is reproduced below for the convenience of our readers.

In this case, the district court held the ’551 patent un-enforceable for inequitable conduct because Abbott did not disclose briefs it submitted to the EPO regarding the European counterpart of the ’382 patent. Trial Opinion at 1127. Because the district court found statements made in the EPO briefs material under the PTO’s Rule 56 materiality standard, not under the but-for materiality standard set forth in this opinion, this court vacates the district court’s findings of materiality. Id. at 1113, 1115. On remand, the district court should determine whether the PTO would not have granted the patent but for Ab-bott’s failure to disclose the EPO briefs. In particular, the district court must determine whether the PTO would have found Sanghera’s declaration and Pope’s accompany-ing submission unpersuasive in overcoming the obvious-ness rejection over the ’382 patent if Abbott had disclosed the EPO briefs.

The district court found intent to deceive based on the absence of a good faith explanation for failing to disclose the EPO briefs. Id. at 1113-16. However, a “patentee need not offer any good faith explanation unless the accused infringer first . . . prove[s] a threshold level of intent to deceive by clear and convincing evidence.” Star, 537 F.3d at 1368. The district court also relied upon the “should have known” negligence standard in reaching its finding of intent. See Trial Opinion at 1113 (“Attorney Pope knew or should have known that the withheld information would have been highly material to the examiner”). Because the district court did not find intent to deceive under the knowing and deliberate standard set forth in this opinion, this court vacates the district court’s findings of intent. Id. at 1113-16. On remand, the dis-trict court should determine whether there is clear and convincing evidence demonstrating that Sanghera or Pope knew of the EPO briefs, knew of their materiality, and made the conscious decision not to disclose them in order to deceive the PTO.

For the foregoing reasons, this court vacates the dis-trict court’s finding of inequitable conduct and remands for further proceedings consistent with this opinion. This court also reinstates Parts I, III, and IV of the panel decision reported at 593 F.3d 1289, affirming the district court’s judgment of obviousness, noninfringement, and anticipation, respectively. The judgment below is


They Invented What? (No. 202)

Posted in They Invented What? by Jake Ward on May 12, 2011

U.S. Pat. No. 4,625,468: Temporary/portable nuclear fallout shelter.

I claim:

1. A portable shelter for placement over a hole in the ground comprising in combination,

a tent enclosure having a floor with a tubular section extendable downwardly therefrom,

means for supporting the tent enclosure to form an enclosed volume above the hole, the tubular section of the tub floor extending downwardly into and lining the hole,

a shield membrane approximately dimensioned and having sufficient surface area to completely cover the tent enclosure when erected, with its circumferential edge extending into and partially buried in a shallow trench excavated around the tent enclosure and hole.


They Invented What? (No. 201)

Posted in They Invented What? by Jake Ward on May 4, 2011

U.S. Pat. No. 4,599,071:  Adjustable beach-shoes.

I claim:

1. An adjustable beach-shoe, comprising:

a platform with four straps adjustable in length secured thereon, including a peripheral wall projecting downwards with a recess defined thereby, having a front end and a rear end provided with a first cut-out and a second cut-out with similar shapes respectively, and two sides of said peripheral wall being provided with inward guiding grooves, a spring member mounted in said recess at the end thereof near the rear end of the platform, the spring member providing a biasing force in a direction toward said front end, and a plurality of projections provided with respect to said front end;

a web member including a tubular portion having two ends, a pair of spring-loaded pins mounted on said two ends respectively, a metal plate secured longitudinally to the tubular portion and having an upper surface and a lower surface, a pair of packing pieces attached to said upper surface and said lower surface of said metal plate respectively, a plurality of elastic threads secured to said tubular portion and extended in a direction opposite to said metal plate, a plastic membrane extended over a surface including said elastic threads, said web member being movable forwards and backwards within said recess with the sliding of said spring-loaded pins along said inside guiding grooves when said web member is mounted in said recess;

a sole member mounted on said platform to cover said recess; and

a guard piece contoured complementarily with each of said first and second cut-outs and provided with slits for engaging with said projections of said platform, the guard piece for the first cut-out being adapted to fit in said first cut-out when said web member is entirely received in said recess to provide a beach-shoe.