Wednesday, August 22, 2012

CAFC interprets 35 USC 102(g)(2) in AMKOR TECHNOLOGY

The relevant text:

Because nothing in the legislative history indicates that Congress attempted to abandon this court’s interpretation of the “made in this country” language of the pre-AIPA version of § 102(g) when it amended the statute and retained the language in § 102(g)(2), this court holds that the court’s interpretation of this language in Scott governs this non-interference, prior invention case under § 102(g)(2). See Lorillard v. Pons, 434 U.S. 575, 581 (1978) (“[W]here . . . Congress adopts a new law incorporating sections of a prior law, Congress normally can be presumed to have had knowledge of the interpretation given to the incorpo-rated law, at least insofar as it affects the new statute.”). This court’s interpretation of the “made in this country” language of § 102(g) (1994) in Scott is consistent with how both parties in this appeal and district courts have inter-preted the “made in this country” language of § 102(g)(2) (2006) as it applies to prior invention, outside of the interference context. See Solvay S.A. v. Honeywell Spe-cialty Materials LLC, 827 F. Supp. 2d 358, 363-64 (D. Del. 2011) (“[N]o authority indicat[es] that the language of § 102(g)(2) should be interpreted differently than that same language had been interpreted before the 1999 amendment.”), on remand from 622 F.3d 1367 (Fed. Cir. 2010); Therasense, Inc. v. Becton, Dickinson & Co., 560 F. Supp. 2d 835, 865 n.26 (N.D. Cal. 2008) (“[F]or an inven-tion conceived outside the United States, the date of conception for purposes of priority for a United States patent is the date the invention is first reported to the inventor’s agent within the United States.” (citing Scott, 281 F.3d at 1247)).

As to reasoning:

The Oka rule does not apply to patent owners like ASAT in validity disputes. This is not an interference, and the standards that apply to interferences do not necessarily apply to disputes over validity. An issued patent is entitled to a presumption of validity under 35 U.S.C. § 282, which can be overcome only with clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2241 (2011); Sandt, 264 F.3d at 1350. The presumption of validity and the clear and convincing burden associated with it did not apply in the interference in Oka. In Oka, the question of entitlement to priority did not carry any presumption and was determined based on preponderant evidence. See Oka, 849 F.2d at 584. In Oka, even under the preponderant evidence standard, the junior party could not prove prior invention by presenting a range of dates that primarily predated but overlapped by one day with the senior party’s conception date. Id. at 584-85.


Evidence establishing that there might have been a prior conception is not sufficient to meet the clear and convincing burden needed to invalidate a pat-ent. Accordingly, the ALJ was correct in his First Supp. ID when he concluded that “Carsem [] failed to prove by clear and convincing evidence that the April/May [] date of invention . . . is prior to the [May through August] date of invention accorded the asserted claims of the patents-in-suit.” First Supp. ID at 18. The Commission commit-ted legal error in reversing this determination based on an erroneous application of the Oka rule to the patent holder. Because Carsem failed to prove prior invention in the United States by clear and convincing evidence, this court reverses the Commission’s determination that the ’277 Patent is invalid under § 102(g)(2).

As to obviousness:

We are not persuaded by Carsem’s argument, which fails to point to any evidence of a motivation or reason to remove the fused lead from the JP-456 reference.

As to KSR:

Carsem was required to present evidence that one of ordinary skill in the art at the time of the invention would have been motivated or found reason to remove the fused lead from the JP-456 reference, or that common sense would have led one of skill in the art to remove the fused lead based on a known problem, design need, or market pressure. KSR Int’l v. Teleflex, 550 U.S. 398, 418-20 (2007).



Post a Comment

<< Home