February 28, 2008 by thomason.

Whenever a CAFC panel suggests that there is a doctrine of equivalents, it’s like a sighting of the Yeti or the Loch Ness monster.  Usually, they are just teasing with the possibility, writing about it in some non-final appeal - which later returns and the DOE then is slaughtered.

Thus it is with today’s panel ruling in Regents v. Dakocytomation, the 2-1 finding that the patentee, who made a narrowing amendment to overcome a prior art rejection, was wronged by the erroneous lower court determination that the presumption of prosecution history estoppel could not be rebutted.  And, you thought there was no ‘flexible bar’ when you narrowed and overcame.

Fine for now, but one has to think that this bunny will go back into the hat, this worm will turn, and the case for infringement by equivalents will not succeed on remand or on a 2nd appeal.  Today though, the DOE was spotted, its shadow presumed to be rebuttable, meaning perhaps, there’ll be at least six more weeks of cases denying that the DOE even exists.

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February 15, 2008 by thomason.

Today, your CAFC issued an order for en banc consideration, not a rehearing, but an en banc review, including whether to tie a process to a tangible device or result, and whether to reconsider the State Street and Excel cases on business methods.  That will be very big!  Guess the CAFC likes its role as agent of patent reform.

The application at issue did not come up as published, but the inventors Bilski and Warsaw have other pending applications for financial risk methods.  More comment, once more is known.

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February 7, 2008 by thomason.

The CAFC used to webpublish only rulings it deemed precedential, but that recently changed. Their publication now of per curiam affirmances gives rise to curiosity as to what made that one case unworthy of anything more wordy. Consider today’s order in Ampex v. Kodak from the D. Del. The record below indicates that the appealed rulings were claim construction of video and data terms, and prosecution estoppel based on an amendment adding the word “said” in response to a 112 objection. The argument was that the amendment was not narrowing or was made for reasons unrelated to patentability. Why are those issues of less interest than what we’ve read in about four similar cases decided by the CAFC in the last six months?

As Congress moves glacially to reform the Patent Act, the gloss on the proposed amendments often mentions harmonization, reduced costs, certainty of patent rights. Most of those came to be concerns due, in some measure, to judicial doctrines that read ‘out from’ the express statutory text. Where then, in these passing seasons of reform, is mention of cures for the unwritten rules of implicit disclaimer and file wrapper estoppel, which have no textual basis in the Act?

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