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Litigation & Appeals

General Appeal Issues
2.1 Can the Commissioner over-turn a BPAI decision?
2.2 Can he refuse to sign a patent?
4.1 In personam jurisdiction for DJ 
4.2 In personam v. subject matter jurisdiction in DJ
4.3 Specific in personam jurisdiction in DJ.
4.4 Destroying records prior to litigation.
Litigation Issues



General Appeal Issues







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2.1:  When 3-member panel enters a decision, can Commissioner constitute a new panel and hear the whole thing over?

Yes.  CAFC, 1994  In re Alappat, 33 F3d 1526
Examiner requested re-hearing of BPAI decision.  Commissioner set up a new panel, including himself.  That was fine.

2.2:  If Commissioner disagrees with BPAI, can he refuse to sign the patent?

Yes, in which case applicant has recourse to mandamus. 
CAFC, 1994  In re Alappat, 33 F3d 1526








4.1   Where is proper in personam jurisdiction for DJ when the fur begins to fly on infringement?

CAFC, Apr25,2011  Radio Systems v. Accession  Pet door case.  Accession in NJ sends C&D to Radio in TN, Radio files for DJ.  Accession moved to dismiss for lack of personal jurisdiction and to transfer to NJ.  TN USDC agreed, so did CAFC.

DJ jurisdiction on out of state D must be consistent w/ state's long-arm-statute.  Avocent v. Aten 552 F3d 1324 (CAFC 2008)  Jurisdiction requires that D directed his activities into the forum and personal jurisdiction is reasonable and fair.  Red Wing v. Hockerson-Halberstadt 148 F3d 1355 (CAFC, 1998).  C&D not enough for DJ jurisdiction but efforts at patent enforcement + C&D may be enough for DJ jurisdiction.  Autogenomics v. Oxford Gene 566 F3d 1012 (CAFC, 2009).  Relevant inquiry is to what extent did the D. patentee purposefully direct enforcement activity at residents in the forum and to what extent does the DJ action arise out of those activities.  Only enforcement activities give rise to DJ v. patentee.    Commercilization efforts in the forum do not give rise to DJ, citing Avocent.  If patentee hires a suit in the forum to go after infringer, that may be enough sustain jurisdiction for DJ vs. the patentee.  Citing Electronics for Imaging v, Coyle 340 F3d 1344 (CAFC, 2003).  If patentee interferes w/ infringer's business, that may be enough for DJ.  Campbell Pet v. Miale  542 F3d 879 (CAFC, 2008)


4.2   Wasn't Medimmune a jurisdiction issue?  Why wasn't it cited in Radio Systems?  

IMedimmune was about subject matter jurisdiction in DJ cases.  Is there a case/controversy when A sends a C&D to B.  Radio Systems was about personal jurisdiction.  Even if A's C&D raises a federal controversy, that doesn't mean the C&D provides sufficient contacts with the forum for B to slap a DJ suit on A in response to the C&D.  


4.3   What is "specific" personal jurisdiction?  

PatObv has good summary Apr27.2011.  It's where personal jurisdiction is granted as a result of D's activities in the forum directly related to the subject matter of the suit.  


4.4   When does document destruction become spoilation?  

May13.2011  Micron v. Rambus CAFC 2009-1264.  IDuty to preserve evidence begins when litigation is pending or reasonably foreseeable.  Citing Vilvestri v GMC 271 F3d 583 (CA4, 2001)   Litigation need not be imminent to be reasonably foreseeable.  Reasonably foreseeable is an objective std -- what would a reasonable person consider foreseeable.  [In this case there was no specific litigation or litigant in sight, just the awareness that litigation was probably coming against someone.]  See PatObv May13.11 .  

4.5  Can you argue claim construction issues at trial?  

No.  It's legal error if the court permits the jury to hear claim construction arguments.  The DC must resolve all claim construction disputes before trial.  Menell article on Patent Claim Construction, pg. 797

4.6   When does document destruction become spoilation?  

May13.2011  Micron v. Rambus CAFC 2009-1264.  IDuty to preserve evidence begins when litigation is pending or 



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Litigation Issues

5.1:   What is must be shown to prove intent in a patent inequitable conduct charge?

May25.2011 Therasense v. Becton, CAFC 2008-1511 etal.
  You have to show that the patentee knew of the reference, knew it was material, and consciously decided to w/hold if from PTO. 

 If on the evidence there are more than one explanations as to why the reference was not provided, then the intent element cannot be proven.  Deliberate deception must be the only reasonable motive for the decision not to provide the reference.

The one alleging IC must show by c&c the intent to deceive.  The patentee has not burden until that evidence is presented.  The mere lack of an explanation for w/holding the reference is not evidence of deceit.

5.2:   What is meant by "but-for" materiality in IC cases?

Therasense, above?. 
This means that the non-disclosed reference is not material unless the patent would not have issued if  it had been disclosed.  Because it is determined from the eyes of the examiner, whether the patent would have issued is based on a preponderance of the evidence standard.

If the patentee commits egregious, purposeful fraud on PTO, such as forged documents, the materiality element can be proved merely by that conduct. [Rader really screwed this, but he's saying that when it's too bad, intent and materiality merge.] 


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