Friday, June 07, 2013

A CAFC case on searching prior art, In re Yeager

Although not a monumental legal case, the CAFC decision in IN RE ROBERT YEAGER merits a look by patent attorneys, both because of the subject matter [methods of identifying relevant prior art references within a database for disclosure to the United States Patent and Trademark Office in connection with a patent application] and because of the arguments made [for example, because a patent applicant’s duty of disclosure is a claim limitation and the prior art "Lee" does not address the duty of disclosure].

Yeager is a good case for release on a Friday. There was relevant prior art: U.S. Patent No. 6,694,331 (“Lee”), which describes a method of “formulating and facilitating searches for intellectual property.”

As to legal standards: We review the Board’s legal conclusions de novo. In re NTP, Inc., 654 F.3d 1268, 1273 (Fed. Cir. 2011). Factual determinations are reviewed for substantial evidence. Id. Anticipation is a question of fact. In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009). The CAFC affirms a large majority of Board decisions, and this was no exception.

Lovin was cited:

As we held in In re Lovin, however, a party that offers only “a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the proper art” waives any argument with respect to those claim elements. 652 F.3d 1349, 1356–57 (Fed. Cir. 2011). We therefore see no error in the Board’s rejection of Yeager’s arguments regarding the “noting,” “disclosing,” and “without conducting a substantive review of the items within [the] database” limitations.


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