Patent Law

Another Piece

By Gary Odom and Jordan Kuhn

Most junk patents are created by incompetent prosecutors, with an assist from incompetent examiners granting bad claims. Example in point - Arthur A. Collins got a couple of junk patents: 4,701,907 and continuation 4,797,589. '907 sunk by §112 ¶2, an unconstruable claim term. '589 down on non-infringement over missing a limitation, and claims "invalid for improper reexamination amendment." Appeal offered no real reprieve.

Southwestern Bell v. Arthur A. Collins (CAFC 2007-1577) non-precedential

The district court had ruled the claim term "means for measuring," in every claim to '907, could not be construed, lacking corresponding structure in the specification, thus rendering the patent indefinite. The appeals court concurred.

When no structure in the specification is linked to the function in a means-plus-function claim element, that claim is indefinite. 35 U.S.C. § 112 ¶ 2.

Southwestern Bell was found not to infringe '589 claims 1-3 because it lacked a "control store." The CAFC agreed, as it did with other district court claim constructions. Doctrine of equivalents was felled by prosecution estoppel.

'589 claims 4-14 went down because of prosecution incompetence, affirmed on appeal.

The district court properly granted summary judgment that claims 4-14 of the '589 patent are invalid for improper claim amendment under 35 U.S.C. § 305. Under 35 U.S.C. § 305, a patent owner may propose an amendment to its patent to distinguish the claimed invention from the prior art or to respond to an adverse decision as to the patentability of one of the claims. Claim amendments during reexamination are limited to "amendment in light of prior art raising a substantial new question of patentability." In re Freeman, 30 F.3d 1459, 1468 (Fed. Cir. 1994). As in Freeman, Collins cannot use reexamination for the purpose of amending its claims to address an adverse claim construction. We agree with the district court that Collins "presented no evidence to contradict its stated purpose for amending the claims of the '589 patent," which was "to preclude any interpretation of the claims in accordance with the district court's opinions . . . in the litigation with Nortel."

The CAFC ruled that the district court had not given Collins sufficient time "to make every possible factual and legal argument" as to infringement of '589 claims 1-3, thus vacating that portion of the trial court decision.

Full post as published by The Patent Prospector on May 28, 2008 (boomark / email).