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IPO Daily News™

Tuesday, 13 February 2018 8:43 am

Federal Circuit Summaries Logo

* * FEDERAL CIRCUIT LACKED JURISDICTION OVER WALKER PROCESS CLAIM

Xitronix Corp. v. KLA-Tencor Corp., 16-2746 — On 9 February in an opinion by Judge MOORE, the Federal Circuit held that it lacked jurisdiction over Xitronix’s appeal and transferred to the 5th Circuit Court of Appeals. Xitronix filed a Walker Process antitrust claim alleging that KLA fraudulently procured the patent and used it to establish a monopoly position. The parties argued that the Federal Circuit had jurisdiction because “the Walker Process claim at issue is one in which patent law is a necessary element of the claim.”

The Federal Circuit said that “the underlying patent issue…does not present a substantial issue of patent law.” Although analyzing allegations that KLA made misrepresentations to the USPTO during prosecution “may require analysis of the claims and specifications and may require application of patent claim construction principles…consistency with the federal question jurisdiction statute requires more than mere resolution of a patent issue in a ‘case within a case.’”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* COURT REVERSES USPTO DETERMINATION OF ANTICIPATION

In Re: Hodges, 17-1434 — On Monday in an opinion by Judge O’MALLEY, the Federal Circuit reversed the USPTO’s rejection of Hodges’s claims as anticipated over the Rasmussen and Frantz references. The claims were directed to a valve assembly for draining various fluids that adversely affect a pressurized system. Claim 1 recited an “inlet seat” that is “define[d]” by a “valve body.”

The Federal Circuit found that “the only permissible factual finding that can be drawn from Rasmussen is that the inlet seat within the unlabeled valve is not ‘define[d]’ by the ‘valve body’ as required by the claim” and ruled that the USPTO’s finding of anticipation was not supported by substantial evidence. Judge WALLACH dissented, writing that “the majority departs from the default rule that deficient agency decisions should be vacated and remanded. In doing so, the majority improperly acts as the fact-finder and dramatically over-reads § 102.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

2019 TRUMP BUDGET ALLOWS USPTO TO SPEND FEE COLLECTIONS OF $3.416 BILLION

Yesterday President TRUMP sent his fiscal year 2019 budget recommendations to Congress. Under the budget, the USPTO would be authorized to spend estimated 2019 fee collections of $3.416 billion. The USPTO was authorized to spend $3.23 billion in 2017; it is currently held to that level by a short-term government spending bill that expires on 23 March. Earlier this month, USPTO Chief Financial Officer TONY SCARDINO reported that 2018 end-of-year projected fee collections would total $3.430 billion. The USPTO’s request appears on pp. 199-200 of the Commerce Department Appendix to the President’s Budget.

IPO COMMENTS ON COUNTRIES WITH INADEQUATE IP PROTECTION

Last week Executive Director MARK LAUROESCH submitted comments on behalf of IPO for the U.S. Trade Representative’s annual Special 301 Review. IPO’s 27-page letter commented on numerous inadequate IP policies in specific countries and international fora. The purpose of the Special 301 Review is to obtain information about countries that deny adequate and effective protection of intellectual property rights or deny fair and equitable market access to U.S. entities that rely on IP protection. IPO’s International Patent Law & Trade Committee, which is co-chaired by STEPHEN W. BAUER (Medtronic, Inc.) and ANOUK BOON (Shell International B.V.), assisted with the preparation of the comments with help from other IPO committees.

IPO ATTENDS EPO CONSULTATION MEETING ON DEFERRED EXAMINATION

Matthew Georgiou

IPO was invited to attend a stakeholder consultation meeting at the European Patent Office in The Hague on Friday, 9 February to discuss the EPO’s proposal to introduce a deferred examination option for applicants. MATTHEW GEORGIOU (Carpmaels & Ransford LLP, London), Vice Chair of IPO’s European Practice Committee, represented IPO at the consultation. The proposal, named User Driven Early Certainty, is part of the EPO’s focus on improving efficiency of its examination process and follows the broader Early Certainty program that targets completion of examination of European patent applications within twelve months. If implemented, the deferment option could be available from 1 July 2018.