Intellectual Property Law

When exclusion order based on multiple patents, failure to appeal under each may render appeal moot

By McKee, Voorhees & Sease, P.L.C.

In a decision last week, the Federal Circuit affirmed the United States International Trade Commission's finding of infringement and validity. 

The claims were brought under three patents that all claimed priority to a common parent application, and thus would ordinarily all expire on the same day.  However, one of the three patents was subject to a 108 day term extension under 35 U.S.C. § 154(b).  The final determination was only appealed as to two patents, one of which was the one subject to the extension.  As the exclusion order was supportable for the full term of both the non-extended patents based on infringement of the non-appealed patent, the determination regarding the non-extended patent was moot, given it would have no effect on the exclusion order.  The extended patent, however, would extend the order beyond the expiration of the non-appealed patent, making the appeal as to that patent not moot

Turning to the merits, the court affirmed the ITC's finding that the patents were not invalid under the written description requirement of § 112.  The patentee substituted the generic word "clearance" for other terms in the claims, but the court held this insufficient to show lack of possession of the invention as of the parent application's filing date.

More detail on Yingbin-Nature Wood Indus. Co. v. Int'l Trade Comm'n after the jump.

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Full post as published by FileWrapper on August 06, 2008 (boomark / email).