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« CVC Substantive Preliminary Motion No. 1 for Priority Benefit | Main | CVC Substantive Preliminary Motion No. 2 to Deny Priority Benefit »

June 30, 2021

Comments

Across several blogs, coverage of this case has raised a related issue of just what an inventor's oath and declaration covers.

While somewhat cerebral, there are real world processing issues that are implicated.

Some take the direct words of the USSC as meaning that ANY change from an 'as-filed' claim NECESSARILY implicates a change from the oath taken by inventors.

This has been 'charged' as changes made to enlargen scope, but on a direct read, there is no reason to limit instances to which the scope may be increased, as those atttempting to read the oath/declaration tightly cannot 'pick and choose' the type of change from the as-filed claims.

On the other hand, it has been pointed out that the oath/declaration directly impacts not only the as-filed claims, but the entire specification as well.

With such a view, it can ONLY be in those cases in which the "No New Matter" rule is violated that any inventor would have a legitimate case for raising later qualms.

I am curious as to how 'The Docs' here view this collateral issue.

Skeptical: I think the Court by thinking about this abstractly (i.e., what would be fair to the parties) has made it possible for an assignor to argue almost always that what has been claimed is outside the scope of what had been assigned. At the "in the weeds" level this would mean a claim scope that (arguably) was not expressly disclosed (but a proper interpretation of Sec. 112 should preclude that; indeed, in this case there was more than a flavor that had the assignor been able to raise this as a ground for invalidity they would have prevailed). At a "30,000-foot level" I think there will be a lot more gnashing of teeth whether a claim that clearly encompasses an embodiment not expressly disclosed was assigned. Think a claim reciting a fastener (nail, screw, nut-and-bolt, rivet, glue) where the alleged infringing article uses Velcro (and does it make a difference if Velcro was known at the time of invention?). That will be where the issue is decided, making the fine distinctions of claim construction broad enough to capture the accused infringing article while not encompassing the prior art or violating Sec 112 even more important. Whether the results turn out on balance to be fair is anyone's guess.

Thanks for the comment.

Dr Noonan,

With your comment of, "had the assignor been able to raise this as a ground for invalidity" are you drawing a distinction between the mechanism of post grant review (IPR having a subset of items to which to challenge with) and a normal Article III challenge (all items)?

Also, you state, "whether a claim that clearly encompasses an embodiment not expressly disclosed was assigned." - As I noted, the ONLY way for this assertion to stand is a violation of the no new matter rule - remembering that the SEPARATE oath/declaration trumps whatever time of assignment may exist.

Skeptical: as to the first point, the issue is clearly with regard to proceedings before an Article III court; the post-grant review proceeding will proceed without any estoppel preventing the Office from continuing in the absence of Petitioner, so if the Petitioner was estopped the Director could step into her shoes.

And yes, in one aspect the new matter rule would need to be violated (which I think was what Minerva wanted to argue). But there is an interpretive question of whether the specification disclosed broadly a device described without limitation to the water permeability of the head (so it would pass muster under 112) but that the inventor subjectively did not invent (no claims to one embodiment, for example). Not sure the Court majority would not have permitted the challenge by the inventor if s/he had been able to testify that s/he had NO subjective appreciation of embodiments comprising the accused infringing article. The point is that in the district court Minerva had no opportunity to make that argument due to application of the estoppel

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