Other Defects

  • Some Defects Are Not Invalidity Defenses: Aristocrat Tech. (Fed. Cir. 09/22/08) (improper revival of an abandoned application is not a basis for patent invalidity; distinguishing Sec. 185 “shall be invalid” language). But they can be basis for inequitable conduct. Id.
  • Improper Filing In Foreign Country Without Foreign License Is Invalidity Ground: Improper filing in foreign country without required foreign filing license. (35 U.S.C. § 185 (“shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181.”
  • Attempted Incorporation By Reference May Fail And Contribute To Another Invalidity Ground: “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Zenon (Fed. Cir. 11/07/07) (series of six apps.; 6th anticipated by 1st; because intervening apps. changed disclosure in part by failure of an attempted incorporation by reference.) Cf. Paice (Ford) (Fed. Cir. 02/01/18) (rev’g PTAB decision that priority application failed to incorporate by reference prior patent: “This application discloses a number of improvements over and enhancements to the hybrid vehicles disclosed in the inventor’s [’970 patent], which is incorporated herein by this reference. Where differences are not mentioned, it is to be understood that the specifics of the vehicle design shown in the ’970 patent are applicable to the vehicles shown herein as well.”); Husky Injection (Fed. Cir. 09/23/16) (rev’g PTAB finding of insufficient particularity of incorporation of two statements combined: “‘The tie-bar nuts can be secured . . . by any appropriate mechanism, such as the pineapple and toothed-ring mechanism described in [Choi].” [and] ‘All cross-referenced patents and application[s] referred to in this specification are hereby incorporated by reference.’”); Callaway (Fed. Cir. 08/14/09) (rev’g Summ. J. of no anticipation, as matter of law prior art reference did incorporate by reference another reference’s teaching); compare Harari (Fed. Cir. 09/01/11) (entire co-pending application was incorporated by reference (by “the disclosures of the two applications are hereby incorporate[d] by reference”)) with Hollmer (same case) (Fed. Cir. 06/07/12) (attempted incorporation too ambiguous; “when the ultimate question implicates the understanding of a person of ordinary skill, such as determining whether the written description requirement is satisfied, construing claims, or evaluating the teachings of a prior art reference, we have reviewed the incorporation statements from the person of ordinary skill vantage point”); Dealertrack (Fed. Cir. 01/20/12) (incorporation of a patent application includes amendments to that application (at least those that occurred before the incorporating application was filed)); Modine Mfg. (Fed. Cir. 02/05/96) (rejecting a claim construction argument based on definition found in incorporated patent: “Incorporation by reference, however, does not convert the invention of the incorporated patent into the invention of the host patent.”)
  • Certificate Of Correction Of Applicant’s Minor Mistake (35 U.S.C. § 255) May Be Invalid: Fixing a structural diagram of a compound to fix a misunderstanding in the art about the structure of the described compound and to accurately represent the compound already described and claimed was of a minor character and permitted in a certificate of correction. Cubist Pharm. (Fed. Cir. 11/12/15) (“heavy burden” to invalidate certificate of correction not met). Cf. Honeywell (Fed. Cir. 10/01/19) (vacating PTAB refusal to allow patent owner to petition Director for certificate of correction under sec. 255 to change priority chain, in response to PGR institution based on petition asserting that claims cannot be backdated to listed priority applications; Director not PTAB responsible for deciding if requirements of sec. 255 met).
  • Incorrect “Small Entity” Verification May Not Be Invalidity Ground: Fraudulent assertion of small entity status leading to lower fee paid at issuance or maintenance may constitute inequitable conduct. Ulead Sys. (Fed. Cir. 12/09/03).

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