For most of us, we're stuck in the August heat, on delayed European vacations, or hopefully just hanging out at the beach. But for the Court it still was work as usual, including a return trip to the Federal Circuit for the defendant in Minerva. Below we provide our usual weekly statistics and a detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.
Precedential opinions: 7
Non-precedential opinions: 7
Rule 36: 1
Longest pending case from argument:In re: McDonald, No. 21-1697 (153 days)
Shortest (non-Rule 36) pending case from argument:Hirsch v. US, No. 21-2163 (34 days)
Case of the week:
Panel: Judges Stoll, Clevenger, and Wallach, with
You should read this case if: you want to know how the Federal Circuit will treat assignor estoppel post-Minerva
You have to feel a little sorry for a party that beats the incredible odds of getting
Unless you've been living under a rock (or the proverbial equivalent of a rock in patent-land—the MPEP maybe), you're no doubt aware of one of the few relatively recent
But this is one of those cases where Vegas got burned. Assignor estoppel survived. The reason why: at least in patent-land, the
So on remand the Federal Circuit did just that. Here, the challenged asserted claim traced back, through a series of continuation and divisional applications, to an application that had been assigned. The Court addressed whether that asserted claim was materially broader than the claims that had been assigned. After all, if the later-issued asserted claim was broader than the assigned ones, the assignor could not have warranted as to the broader claim's validity.
What seems like a relatively straightforward claim construction issue—is one claim (the asserted one) basically no broader than another (the assigned ones)—was complicated by the fact that the broadest (at least for our purposes) assigned claim (claim 31) had been cancelled prior to the assignment. That led to the metaphysical question of whether an assignor could vouch for the validity of a claim that had been cancelled. At least on these facts, the answer was yes. Without getting into too much nitty gritty, the basic issue was that the examiner decided to reject the application as improperly claiming two distinct inventions, so the applicant elected to prosecute the claims of one invention but not the other. But in not prosecuting the other invention (including claim 31) the applicant requested that the examiner cancel those claims "without prejudice." Given that history as a whole, the Court said that the cancellation "says nothing, implicitly or explicitly, about the patentability of claim 31." The applicant remained free to prosecute claim 31 in a divisional application, and that right travelled with the assignment. As such, even though claim 31 had been cancelled, the assignor still could—and here did—represent that the subject matter of the claim was not invalid. (Lest anyone assume this means that any assigned cancelled claim could be represented as not invalid, the Court made clear in a footnote that its holding was "limited to the facts of this case.")
Having determined that the assignor had warranted to the validity of the cancelled claim, the Court then determined whether the asserted claim was materially broader than the assigned ones. That issue, the Court explained, was a question of claim construction. And applying those principles, it concluded that the asserted and assigned claims were not materially different in breadth. With that, the Court once again affirmed the district court's assignor estoppel decision—leaving the defendant where it began on its journey through the federal appellate process.
Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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